Carrie Bradshaw’s favorite footwear brand opened a trademark case in China back in 2000, when Britney Spears, NSYNC and Eminem ruled the airwaves. Now, Manolo Blahnik is celebrating a long-awaited legal victory handed down by China’s highest court that means it can finally break into the country’s massive luxury-loving market.
The premium shoe maker’s two-decades-plus saga began in 1999, when a filer in China got authorities there to approve in January 2000 a trademark application for “Manolo Blahnik” that covered footwear—a maneuver commonly referred to as a “pirate mark.” China’s “first-to-file” system routinely sided with whomever got their patent or trademark application in first, regardless of whether that filer had any right to a mark or plans to put it to use. Trade mark pirates would routinely snap up valuable intellectual property and essentially hamstring companies hoping to enter the Chinese market, asking them to pay for the rights to brand marks maliciously created in their very own names.
By April 2000, the Birkenstock collaborator sprang to action objecting to the move, but the China Trade Mark Office (CTMO) rejected its petition 17 months later, citing “insufficient” proof that Manolo Blahnik had any meaningful standing in the country prior to the pirate mark approval. The company acknowledges it wasn’t able to show evidence of sales in China before the malicious filing popped up.
China’s Trademark Review and Adjudication Board (TRAB) next rejected an October 2001 appeal, with the Intermediate Court and High Court hearing and dismissing subsequent appeals in 2008 and 2009.
Between 2013 and 2016, Manolo Blahnik unsuccessfully tried to get the pirate mark cancelled when it discovered it wasn’t in use, failing to convince the TRAB and CTMO.
In 2015, TRAB dismissed the shoe-repair newbie‘s attempts to invalidate the pirate mark on the grounds of its “name rights and unregistered trade mark rights, bad faith of the trade mark pirate, and a negative influence of the pirate mark on society.” The following year Manolo Blahnik took its case to the IP court, which slammed the door shut in 2018. China’s High Court sided with the IP Court when it heard the brand’s appeal later that year.
Just weeks into the pandemic, the footwear icon in April 2020 escalated its efforts by asking China’s Supreme People’s Court for a retrial, again citing its name rights and the pirate’s bad faith. The court in December 2020 allowed Manolo Blahnik’s appeal to move forward, paving the way for a January 2022 retrial and the court’s “final decision” last month ruling in favor of the stiletto maker, putting an end to the “long and challenging journey,” said Georgina McManus, chief legal officer for the London-based label.
Manolo Blahnik, founder and creative director of his namesake label, offered his gratitude to the Supreme People’s Court for the “remarkable result.”
“We are truly humbled and grateful for the support we have received in China and internationally, both from within the fashion industry and beyond,” he said in a statement. “This generous assistance has been a significant contributing factor to this successful result.”
China has cleaned up its act with intellectual property in recent years though brands still face challenges securing their rights. Champion scored a legal victory when parent Hanesbrands convinced a Chinese court to rule against six defendants selling counterfeit goods violating its marks. New Balance in 2017 also prevailed in its infringement dispute against three Chinese shoemakers using its signature logo without permission, with a similar case last year awarding the brand $3.87 million.
For many high-end brands, China is critical for sales and growth. Last year the owner of St. John purchased Sergio Rossi with plans to grow the Italian luxury shoemaker’s footprint in China. Kering’s CEO openly lamented restrictions in China that clipped Gucci’s results while Burberry recently teased out Mainland China sales to illustrate the impact of Covid lockdowns on its quarterly performance. Meanwhile, Richemont, Alibaba and Farfetch united in a $1.1 billion partnership targeting China’s luxury-hungry consumer.
Though Manolo Blahnik now has the green light to operate in China, it’s unclear how the brand will attack the 1.4-billion-strong market. It has a number of options at its disposal, such as opening a digital store on Alibaba’s Tmall luxury pavilion, where Net-a-Porter and Michael Kors got their feet wet. It might also consider forging a joint venture, the path Victoria’s Secret took earlier this year. Regardless of its roadmap, expanding into China is likely to grow the brand’s 300-plus doors, which includes 20 freestanding boutiques.