British shoe designer Manolo Blahnik has won the right to use his name in China for the first time, ending a costly 22-year legal battle.

In a rare ruling, China’s highest court cancelled a trademark incorporating the Manolo Blahnik name that has been owned by Chinese businessman Fang Yuzhou.

The decision will enable Blahnik — who started his business in London in 1971 and became a household name in the early 2000s through HBO’s Sex and the City — to sell his brand in the world’s fastest-growing luxury market for the first time.

“It was a huge hole in our existence,” Kristina Blahnik, chief executive of Manolo Blahnik and the founder’s niece, told the Financial Times. “When we got the call . . . genuine tears were shed.”

China has a “first to file” trademark system, which has left many foreign companies vulnerable to “pirates” who try to sell trademarks when those businesses enter China. Even small start-up British designers find their names have already been registered in China, according to one lawyer familiar with such cases.

Intellectual property theft has been a long-running source of tension between China and its trade partners, particularly the US.

Amendments designed to strengthen trademark legislation were implemented in China in November 2019, and in recent years more foreign companies have won disputes in Chinese courts.

Last year, US sportswear brand New Balance won a lawsuit against two local companies for imitating its “N” logo and received Rmb25mn in damages, among the largest compensations granted to foreign brands in trademark court fights.

Former NBA superstar Michael Jordan was able to stop Chinese sportswear manufacturer Qiaodan Sports using its trademarks after a nine-year lawsuit that was handed down in late 2020. Jordan argued that Qiaodan, which is the literal Chinese translation of his name, had infringed his rights.

Other luxury brands including Italian menswear group Zegna and British label Dunhill have also won trademark infringement lawsuits in China.

There have also been high-profile defeats. French luxury group Hermes lost a court battle in 2012 to stop a Chinese menswear company using Ai Ma Shi — a Chinese translation of Hermes — on its products. Hermes’s lawyers have been trying to invalidate the trademark since 1997.

Manolo Blahnik had several earlier appeals dismissed because the company could not prove it had a reputation in China before 2000, and because Fang Yuzhou appeared to be actively using the trademark for a shoe label he had shares in, legal experts said.

Blahnik said the company’s plans for the Chinese market were still in the early stages, but she hoped to begin selling directly in China by the second half of next year. “We won’t be racing with a rocket into China, but gently walking,” she said.

The decision is likely to act as a bellwether for other foreign brands locked in disputes.

“It could be a landmark case for not only other luxury brands but also brands such as [Japanese retailer] Muji, which is in a 20-year trademark battle,” said Rieko Michishita, veteran China IP lawyer at law firm Bird & Bird.

The ruling will allow Blahnik and its retailer partners to begin selling in China without fear of legal retaliation and to fight counterfeits being sold in and exported from the country, he added.

The privately owned shoemaker will face tough competition from brands such as Louis Vuitton.

Manolo Blahnik had sales of €42.3mn in 2020 — the most recently filed accounts — down 7 per cent from the previous year due to the coronavirus pandemic.

Although the company has not sold directly in China, it has courted Chinese luxury consumers via stores in Tokyo, Hong Kong, Singapore, Taipei and Seoul.

On the costs of the legal challenge, Blahnik said: “I would have a heart attack if I really had to add it all up.”

Source: FT.com