DLA Piper advised Manolo Blahnik in a 20-year-long trademark suit in China.
DLA Piper acted as the legal advisor for Manolo Blahnik on his re-trial application before China's Supreme People's Court (Supreme Court), following a long-running trademark dispute in China. Manolo Blahnik is a world-famous shoe designer and founder of the eponymous luxury brand.
After a legal battle lasting for over 20 years, Manolo won the right to legally use his name in China as a result of the Supreme Court's decision to cancel a pirate trader incorporating Manolo Blahnik's name. The pirate mark had been owned by the Chinese businessman (Fang Yuzhou (Fang)) since 1999 when Fang pre-emptively applied to register the mark Manolo & Blahnik.
China has a first-to-file trademark system, which in the past had caused issues for several foreign and local companies. Even start-ups and lesser-known fashion designers have found that their marks or names are registered in China before they have had a chance to register them themselves, preventing them from using their name or brand in Mainland China.
Although Manolo Blahnik was an established designer in 1999, he was active in the fashion industry since the 1970s. However, he was yet to file for a trademark registration in China, which led to a lengthy legal battle over proving Manolo Blahnik had a considerable reputation in China before the filing of Fang's pirate mark.
Owing to the lack of sufficient evidence, several appeals were dismissed over the years, as opposed to Fang, who submitted evidence of the fact that he was actively using the trademark in China.
Manolo Blahnik applied for a re-trial before the Supreme Court in April 2020.
The Supreme Court judgment allows the designer to sell his products in China, the world's fastest-growing luxury market, without fear of legal retaliation. It also enables the Manolo Blahnik business to better fight counterfeits being sold into and exported from China.
The DLA Piper team was led by Edward Chatterton, based in Hong Kong, along with Crystal Cai, Senior Consultant, Shanghai, IPT.