Factual Background of the Case.
Manolo Blahnik first established his high-fashion shoe brand in the 1970s, with increasing commercial success and a growing international reputation starting at the end of the 1970s and in the beginning of the 1980s. Subsequently, a lot of consumer attention was drawn to the brand and it was catapulted to global fame by the popular TV series "Sex and the City" at the end of the 1990s, in which fictional character Carrie Bradshaw is a huge fan of the brand, and regularly shows off several of Manolo Blahnik’s creations. In January 1999, i.e. less than a year after Sex and the City first aired in China, a businessman active in the footwear industry, Fu Yuzhou, applied for a Chinese trademark registration for the “MANOLO & BLAHNIK ⻢诺罗•⻉丽嘉” logo (“the squatted mark”). This logo incorporates the full MANOLO BLAHNIK name and its transliteration in Chinese characters. Importantly, in 1999, Manolo Blahnik did not have any Chinese trademark registration, nor did the brand sell or even advertise any of its shoe creations in China.
Less than a year after the squatted mark was applied for, Manolo Blahnik initiated his decades-long legal war to recover his brand in China. Manolo Blahnik first opposed the squatted mark, by filing an opposition procedure, followed by a review procedure and two instances of administrative appeals, but lost all these proceedings. He mainly relied on his alleged well-known trademark of MANOLO BLAHNIK, his personal name right in MANOLO BLAHNIK and his alleged prior unregistered trademark right. However, since there was not sufficient evidence showing prior use before the filing date of the squatted mark, i.e. January 1999, or showing prior reputation obtained before that date, his claim was dismissed in those proceedings.
Subsequently, upon the successful registration of the squatted mark, Manolo Blahnik filed an invalidation proceeding, and upon obtaining an initial unfavourable result, again appealed it twice, but lost all these proceedings as well. Apart from pointing to the lack of sufficient evidence showing his prior right and reputation, the judges in both instances of administrative appeals also based their rejection on the principle of “non bis in idem”. Essentially the courts found that the legal grounds and facts submitted by Manolo BLAHNIK in the invalidation proceedings were too similar to the ones relied on in the earlier unsuccessful opposition proceedings. Although Manolo Blahnik provided new evidence, the courts found that such evidence was not newly “discovered” evidence, but rather pre-existing evidence not submitted before. The judges therefore disregarded the evidence and dismissed the appeals.
Manolo Blahnik therefore took his last chance and applied for a retrial procedure with the Supreme Court, in a last-ditch attempt to overturn the appeal judgment in the trademark invalidation case.
The highlights of the SPC judgment
The Supreme Court finally recognized the Spanish high-fashion shoe designer’s name right in the MANOLO BLAHNIK mark, based on the following grounds:
- Admissibility of the evidence and applicability of non bis in idem? The Supreme Court essentially agreed with the lower Courts that the newly submitted Chinese translations of the foreign evidence which Manolo Blahnik filed in the previous proceedings should not be considered. However, the Supreme Court did recognize that the newly submitted evidence such as national library search reports and various media reports should be considered as “new facts” which are substantially different from the evidence submitted in the previous proceedings, and are therefore admissible. This means that, compared to the previous assessments by the lower courts, the Supreme Court took a more flexible and pragmatic approach regarding the novelty of the evidence submitted.
- Foreign evidence of use and reputation relevant? One of the key difficulties for Manolo Blahnik in this case was to show prior use and reputation in China before the filing date of the squatted mark in January 1999, because Manolo Blahnik did not use or advertise its mark at that time in China. The Supreme Court also took a very pragmatic approach on this issue, by not only considering the evidence produced directly in China, but also considering the evidence of use and promotion in overseas markets, including in the Hong Kong market. The Supreme Court considered that this evidence was also capable of indirectly impacting on the pre-existing reputation of the brand in China.
- A prior name right protection requires an established and specific connection, i.e. the public perceives the trademark as a reference to the personal name. When considering whether a trademark infringes on a person’s prior name right, the Supreme Court took the view that it is important to consider whether there is a stable and specific connection between the trademark and the individual’s personal name. In other words, the relevant assessment to make is whether the public would consider the trademark to refer to a certain individual, and whether the public would presume that a product bearing such trademark is licensed by or otherwise connected with said individual. When applying these rules to the case at hand, the Supreme Court considered the fact that Manolo Blahnik is a renowned Spanish footwear designer and that his name by itself is not a fixed Spanish word. The Supreme Court also noted that the Latin-letter part of the squatted mark is identical to the personal name of Manolo Blahnik and referred to the bad faith of the applicant. The SPC commented that, as a player in the footwear industry for a long time, the registrant of the squatted mark should have known Manolo Blahnik, and that the registration of the squatted mark registered in Class 25 for shoes, boots and other goods cannot be a mere case of coincidence and must therefore be declared invalid.
- Recognition of the personal name right is sufficient to invalidate the squatted mark, other grounds for invalidation not considered. The Supreme Court recognized Mr. Blahnik’s personal name right in the mark MANOLO BLAHNIK. Since this ground is sufficient to declare the squatted trademark invalid, the SPC did not analyse any of the other legal grounds raised by Manolo Blahnik, like his alleged prior well-known trademark, unregistered rights etc.
Positive news and lessons learned
The SPC judgment in this case clearly sends a positive message. It shows that the general attitude and aim of the Chinese courts is to further curb bad faith trademark hijacking by judging cases in a more pragmatic and flexible manner, rather than maintaining a very rigid application of the first-to-file rule in trademark cases. It needs to be highlighted that this case was indeed complex and challenging, given the very early filing date of the squatted mark in January 1999, i.e. before Mr Blahnik had made any use or advertising of his brand in China. With this judgment, China’s Supreme Court is showing that it is willing to adopt a more pragmatic attitude, particularly by taking into consideration the evidence of reputation even in overseas markets to support the claim of personal name rights in MANOLO BLAHNIK in China.
Trademark owners faced with squatted marks in China can also learn some valuable lessons from this case. It seems clear from the factual background that Manolo Blahnik was faced with a number of procedural setbacks and oversights, especially at the initial stages of the dispute. For example, there seems to have been an oversight when his initial evidence did not contain the Chinese translations of the foreign evidence, which caused all such evidence to be simply disregarded. Furthermore, several evidence gathering options were arguably not explored sufficiently, until later in the dispute, after the opposition procedures had already been dismissed. This led to subsequent procedural issues, with the second instance court in the invalidation appeals disregarding a substantial amount of evidence. Trademark owners can learn valuable lessons from this situation for future cases. Sufficient efforts and attention need to be dedicated to strategic evidence gathering and adequate case preparation, also in the initial stages of trademark disputes. This may prevent the issue of courts disregarding evidence due to formal deficiencies as well as issues with the non bis in idem principle when such evidence is submitted only afterwards, after meeting the formality requirements.
Finally, another lesson from this case is that even if trademark owners are faced with trademark squatters and initial unfavourable decisions at the CNIPA level or even at the lower court level, perseverance in fighting the legal battle through all levels of appeals often pays off in the end. It is important to continue to dedicate sufficient efforts to strategic evidence gathering and adequate case preparation, to stay the course and take the battle to the highest courts so the war can eventually be won.
Authored by Stefaan Meuwissen and Helen Xia.