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Clifford Chance

Clifford Chance

Intellectual Property

Talking Tech

Luxury shoe brand Manolo Blahnik steps into the Chinese market after a favourable trade mark decision

Intellectual Property Consumer 30 August 2022

Manolo Blahnik, the eponymous brand established in London, has won a trade mark case concerning the use of the name 'Manolo Blahnik' for footwear in China. The landmark ruling, handed down by the Supreme People's Court of China in June 2022, marks the end of a 22-year legal battle between Manolo Blahnik and a third party in China, and provides practical lessons for luxury brands considering entry to the Chinese market.

First to file trade mark system

In China, trade marks have been historically based on a "first to file" system. In practice, the system can lead to bad faith trade mark applications being made by third parties who attempt to register trade marks to obtain rights to a certain brand, with the intention of profiting from the registration when the bona fide brand attempts to expand in to the Chinese market. As demonstrated by the facts of the ongoing proceedings, this can be a serious issue for brands in all sectors looking to operating in the Chinese market in situations where third parties have been "first to file" the trade mark at the CTMO and therefore block applications from genuine brand owners. At present, the only way for a brand to overcome this obstacle is to initiate a trade mark opposition (during the 3-month opposition period) or invalidation case (after the trade mark is registered).

Trade mark invalidation

For a bona-fide brand owner to succeed in a trade mark invalidation case in China based on a prior right (this could be a trade mark, or right of the name), the brand owner needs to file an invalidation application within 5 years after the adverse party's trade mark is registered and must prove that:

  • the adverse party's trade mark is similar or refers to the brand owner's trade mark or name;
  • the brand owner had applied for its mark for the same or similar goods/services prior to the date of application of the adverse party's trade mark; or in the case of an unregistered mark, the brand owner's mark had been used on the same or similar goods/services and developed a certain reputation prior to the date of application of the adverse party's trade mark; and
  • the use of the adverse party's trade mark is likely to cause consumer confusion.

It would appear that to try and invalidate the "MANOLO & BLAHNIK" mark, the Manolo Blahnik team argued that:

  • the "MANOLO & BLAHNIK" mark misled consumers and caused an unhealthy social impact;
  • the "MANOLO & BLAHNIK" mark infringed Manolo Blahnik's well-known trade marks;
  • the "MANOLO & BLAHNIK" mark infringed Manolo Blahnik's unregistered trade mark and right of name; and
  • the registration of the "MANOLO & BLAHNIK" mark was obtained by fraudulent or otherwise improper means.

To date, the full text of the judgment is not available online.

How else can bad faith trade mark registrations impact brands?

Bad faith trade mark registrations can also cause issues for brand owners transporting products in and out of China. If a third-party lodges its bad faith registration with Customs in China, there is a risk that Customs could seize the legitimate brand owner's labelled products (or product parts, if bearing the brand name which is same or similar to the bad faith registration) at the border, on the basis they are infringing the bad faith registration. This could cause serious practical issues for businesses and means brands doing any sort of manufacturing in China, even if not actively selling into the market, should consider trade mark protection early.  

How does the ruling impact brand owners?

The ruling signifies that Manolo Blahnik will now be able to operate in China and will have authority to enforce brand rights in the Chinese market. To date, fans of Manolo Blahnik based in China would have to travel to Manolo Blahnik stores in neighbouring locations, such as Japan, Malaysia, and Singapore, to purchase Manolo Blahnik shoes. The advantages of entry to the Chinese luxury market are clear – a 2021 report released by Tencent and Boston Consulting Group (the "Luxury Report"), forecast that the size of the luxury market would be 630 billion Chinese Yuan (approximately GBP 77 billion) by the end of 2022.

The Luxury Report stated that 21 per cent of global consumer spending on luxury goods is derived from China and predicted that China is forecasted to be the world's largest luxury market by 2025. This favourable ruling, paired with current consumer trends and brand-friendly intellectual property legislation, is a highly encouraging indicator for international luxury brands looking to expand their operations to the Chinese market. Post 2019, a number of high-profile brands have also received favourable trade mark related decisions in the Chinese courts, namely:

December 2020

After Qiaodan Sports (a Chinese sportswear manufacturer) registered the trade mark "QIAODAN" (in Chinese) in Class 28, Michael Jordan (the former basketball player) successfully argued that the QIAODAN trade mark (in Chinese) infringed on his intellectual property rights, as the word QIAODAN is a Mandarin transliteration of "JORDAN".

The decision followed a 9-year court battle over the matter. The Court ruled that Qiaodan Sports would no longer be able to use the Chinese characters of QIAODAN (in Chinese) as its business name or use any recently registered QIAODAN (in Chinese) trade marks on its product, as well as ordering a settlement payment to be made to Michael Jordan.


February 2021


Burberry, the British luxury brand, was granted a preliminary injunction against the owners of a Chinese brand called "Banberry" for trade mark infringement, arguing that Baneberry was "highly suspected of copying and imitating" the former brand's well known trade marks.

Brands that have been involved in trade mark litigation prior to the 2019 amendments to the Chinese trade mark laws could consider revisiting the issue with the courts. The decision is an indicator that the courts may now take a more sympathetic view to bona fide brand owners hoping to engage with the lucrative Chinese market.

Despite the encouraging trend, brands hoping to operate in China should endeavour to file trade mark applications as early as possible to avoid the risk of lengthy proceedings delaying entry to such a lucrative market.

The 22 year legal battle of Manolo Blahnik – the timeline


The eponymous 'Manolo Blahnik' brand was established, after the acquisition of the first Manolo Blahnik boutique in Chelsea, London.


January 1999


A third party unaffiliated with the Manolo Blahnik brand filed an application for the "MANOLO & BLAHNIK" (in English and Chinese) trade mark at the Chinese Trade Mark Office ("CTMO"), covering goods related to shoes in Class 25.


January 2000


The "MANOLO & BLAHNIK" trade mark was published for opposition in China by the CTMO. The registration made the third party the first to register a trade mark incorporating the words "Manolo" and "Blahnik" together in China.


April 2000


Manolo Blahnik filed an opposition against the "MANOLO & BLAHNIK" trade mark application at the CTMO.


August 2001


The CTMO rejected the opposition and stated that the evidence submitted did not demonstrate business dealings or sales of Manolo Blahnik shoes in China prior to the application of the "MANOLO & BLAHNIK" trade mark. Manolo Blahnik appealed the CTMO's decision with the Trademark Review and Adjudication Board ("TRAB"), then the Beijing First Intermediate People's Court, and eventually the Beijing Higher People's Court.


June 2009



The Beijing Higher People's Court dismissed Manolo Blahnik's appeal and approved registration of the "MANOLO & BLAHNIK" trade mark.


June 2014


Manolo Blahnik filed an invalidity action against the "MANOLO & BLAHNIK" trade mark registration at the TRAB.


September 2015


The TRAB rejected the invalidity action and stated that the evidence submitted did not demonstrate business dealings or sales of Manolo Blahnik shoes reached sufficient reputation in China prior to the application of the "MANOLO & BLAHNIK" trade mark. Manolo Blahnik subsequently appealed the TRAB's decision with the Beijing IP Court, and then the Beijing Higher People's Court. Both courts dismissed Manolo Blahnik's appeal of the decision.


November 2019


In April 2019, the Standing Committee of the National People's Congress (NPC) of China adopted an amendment to Chinese trade mark law. The amendment specifically prohibited "bad faith" trade mark filings and increased the consequences of trade mark infringement, thus enhancing protections for brand owners.


Late 2020


Manolo Blahnik was granted permission to bring the invalidity action case in front of the Supreme People's Court of China, (the "Supreme Court"), the highest court in China.


January 2022


The Supreme Court granted Manolo Blahnik the opportunity to appeal the decisions of the lower courts, following the dismissal of previous legal actions submitted by Manolo Blahnik.


June 2022


The Supreme Court cancelled the "MANOLO & BLAHNIK" (in English and Chinese) trade mark. The decision means that Manolo Blahnik can trade in China for the first time since the brand was established in 1970. The full decision has not been published yet.

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