Manolo Blahnik, an internationally famous fashion designer, relied on his unregistered personal name rights to attempt to invalidate a trademark incorporating his name. The case eventually reached the Supreme People’s Court which clarified the conditions for the protection of an unregistered personal name right as a prior right. Such protection generally requires an established and specific connection, i.e., the public must perceive the trademark as a reference to the personal name.
Less than a year after the squatted mark was applied for, he initiated his decades-long legal war to recover his brand in China. Manolo Blahnik first opposed the squatted mark, including a review procedure and two instances of administrative appeals, but lost all these proceedings. Largely due to the lack of sufficient evidence showing prior use before the filing date of the squatted mark, i.e., January 1999, or showing prior reputation obtained before that date, his claim was dismissed in those proceedings.
Court Decision
The SPC’s judgment essentially focused on three aspects.
Firstly, the admissibility of the evidence and applicability of non bis in idem. The SPC essentially agreed with the lower courts that the translations of evidence submitted before should not be considered. However, the SPC did recognize that the newly submitted evidence such as national library search reports and various media reports should be considered as “new facts” that are substantially different from the evidence submitted in the previous proceedings and are therefore admissible.
Secondly, the SPC recognized that foreign evidence of use and reputation may be relevant. One of the key difficulties for Manolo Blahnik in this case was to show prior use and reputation in China before the filing date of the squatted mark in January 1999, because Manolo Blahnik did not use or advertise its mark at that time in China. The SPC also took a very pragmatic approach on this issue by not only considering the evidence produced directly in China, but also considering the evidence of use and promotion in overseas markets, and in the Hong Kong SAR market. The SPC considered that this evidence was also capable of indirectly impacting the pre-existing reputation of the brand in China.
Thirdly, the SPC held that prior name right protection requires an established and specific connection, i.e., the public perceives the trademark as a reference to the personal name. When considering whether a trademark infringes on a person’s prior name right, the SPC took the view that it is important to consider whether there is a stable and specific connection between the trademark and the individual’s personal name. In other words, the relevant assessment to make is whether the public would consider the trademark to refer to a certain individual, and whether the public would presume that a product bearing such trademark is licensed by or otherwise connected with that individual.
The main takeaways from this case are that the protection of a name right as an unregistered prior right under the Trademark Law requires an established and specific connection, i.e., the public must perceive the trademark as a reference to the personal name, and that even foreign evidence and evidence from the Hong Kong SAR can be considered to establish a personal name’s reputation in China at a given time.
