Manolo Blahnik has emerged victorious after a decades-long struggle to secure its trademark rights in China. The origin of the dispute was the successful 1999 registration by a man called Fang Yuzhou of the following mark:
Back in the day, China strictly adhered to the first-to-file principle when it came to trademarks, meaning that whoever won the race to the registrar got the trademark, without regard to prior use of same. In the intervening years, however, China has moved in a more equitable direction, particularly in instances where the first filer is acting in bad faith.
Kudos to Manolo Blahnik for its persistence. After all, it is probably in large part because of the efforts of wronged brands like them that China’s legal shift occurred in the first place. And it takes brands like Manolo Blahnik to put up these fights. For smaller brands, reality has often dictated that they gave in to the extortion of trademark squatters, or changed their names, or simply hoped that the worst-case scenarios (such as having their exports seized by China Customs) never materialized.
Of course, for a Manolo Blahnik, there’s more at stake and less room for maneuver than for a run-of-the-mill brand. Adopting a different name for the Chinese market is problematic from a branding perspective. Trying to wing it is not a realistic option for a brand looking to sell in China, as opposed to just exporting out product. As for paying the ransom, just imagine the market value of a trademark like Manolo Blahnik.
A few years ago, I helped a famous (though not Manolo-famous) European brand purchase a trademark from a squatter (for the record, I was not advising them during those years when they were deciding not to register their mark in China!). The price tag was $200,000, and those squatters thought that they were selling the trademark to a counterfeiter, not to the actual brand. And again, that was for a brand not nearly as prominent as Manolo Blahnik. That’s a lot of money to pay just because some dudes in China’s Rust Belt registered your trademark first.
Manolo Blahnik’s win opens the door in earnest to the Chinese market for the brand. This is a meaningful accomplishment, which may well prove to have been worth the long slog. But you know what’s better than prevailing in a 22-year legal dispute? Easy, not being embroiled in that dispute in the first place.
Your brand can avoid getting into a predicament like Manolo Blahnik’s by registering its trademarks before it starts doing business in China. And we mean way before, as when you start thinking about it. And “doing business in China” includes manufacturing product in China for export. In some cases, it might even make sense for brands manufacturing product in other countries to register their trademark in China: You might not be making product in China, but counterfeiters of your product might.
The lessons of Manolo Blahnik’s China trademark saga transcend China. Trademark squatting is has fast become a problem in Southeast Asia as well, meaning brands have to be forward-thinking when it comes to markets such as Vietnam and Indonesia. Manolo Blahnik was iced out of the Chinese market for decades because some dude in China registered their trademark first. Do not get shut out of promising markets yourself.