Q&A: Liz Lenjo on Manolo Blahnik’s China win
After a 22-year-long dispute, London-based shoe brand Manolo Blahnik announced last week (July 19) that it has won the right to be able to use its name as a trademark in China.
The impasse had made the company unable to benefit fully from the country’s luxury goods market.
Two decades earlier, a Chinese businessman had exploited the country’s 'first-to-file' system to trademark a similar name, ‘Manolo & Blahnik’.
The judgment, handed down by the Supreme People’s Court of China (SPC) earlier in July, could herald a turning point for foreign brands who wish to obtain IP protection in the Chinese market.
WIPR asked fashion IP lawyer Liz Lenjo for her observations on the case.
What are your general observations on the case?
Twenty-two years is a long, long time. However, I applaud Manolo Blahnik's legal team for pursuing and sticking to the cause. The case outcome gives foreign brands hope of protecting their brands in China, for both established and young/up-and-coming brands.
What will the impact of the case be on other foreign brands seeking IP protection in China? Will it now be easier for them to obtain trademarks?
We hope that this case sets precedence and makes it easier for foreign brands to seek IP protection in China and deter squatting practices.
Furthermore, in my view, if China wants to remain a manufacturing 'superpower' in the fashion industry, this will help it retain business.
Do you think China IP law should be updated further in light of this and other cases in the past? Do you agree with the 'first-to-file' system?
The 'first-to-file' system has advantages and disadvantages. However, it keeps IPR holders on their toes when it comes to asserting their rights. In my opinion, it also keeps IP lawyers busy and on their toes too.
The 'first-to-use' system would also have its own challenges because the digital space accords access to real-time information and nothing would stop another from using the brand in their jurisdiction before the legitimate right holder.
With stringent anti-trademark squatting laws and regulations, first-to-file would be more efficient, especially trademarks for made-up words or foreign language trademarks.
What does this case mean for squatters' rights and 'bad faith' arguments?
I think it is time we had some supplementary rules that deal with trademark squatters and 'bad faith' arguments. Relying on well-known marks arguments is proving rather unsustainable and becomes very unfair sometimes to the IP rights holder.
The analysis or scrutiny of 'bad faith' arguments should be objective rather than subjective.
Liz Lenjo is managing consultant of her own Kenyan boutique firm, MYIP Legal Studio; advocate of the High Court of Kenya; and listed as a WIPR 2021 Influential Woman in IP.
