kathi GarnierImagine your business is thriving and new opportunities are opening globally. You think about expanding to other big markets like China and therefore you want to register your trademark on the new market. The moment you file your trademark you are being sued by a Chinese plaintiff who does not own your products, but who owns your trademark. This so-called “Brand Squatting” is what happened to Manolo Blahnik 22 years ago.

Manolo Blahnik has taken numerous actions against Chinese businessman Fang Yuzhou since 1999 to dispute the validity of trademarks Fang has filed like for example “Manolo & Blahnik”.

While Manolo Blahnik has been well known internationally since the 1970s, China has different intellectual property (IP) restrictions compared to countries such as the United States, which requires companies to prove prior use or intent to use a trademark before it can be registered.

China is a “first to file” jurisdiction, which meant Fang’s claim to the name as the first person to trademark it in the China market in 1999 was long found to be stronger under Chinese law.

Manolo Blahnik had to provide evidence of prior reputation and prior rights to challenge Fang’s registration which was a very difficult process.

According to the Independent, recent changes to the country’s Intellectual Property laws have led to crackdowns against “bad faith filings” – paving the way for high-profile wins for both global brands and Chinese brands against pirate marks.

A thorough watch of the market is key for the success of your business strategy. “Every trademark department should have a consistent global watch of its top 20 to 100 most successful trademarks that create the biggest revenue to spot collisions in time. If a company does not identify such threats, this can cost a lot of money and you might lose a significant part of business.” states Kathi Garnier, Key Account Manager at Questel.

You should protect these trademarks from unauthorized use by third parties, which may adversely impact the goodwill associated with the trademarks and confuse the public as to the source of the goods/services being offered under the company’s trademarks. This requires commercially available services to provide trademark watch services internationally.

Questel Group handles worldwide monitoring of conflicting trademarks. All trademarks identified in this process are forwarded to your team. If requested, possible risks arising from earlier rights of a potential opponent and the situation regarding utilization are checked in advance and additional searches are conducted regarding possible options for your company to acquire earlier third-party rights to establish a defence position and possible strategies for attack.

By choosing Questel Group you have access to the full extent of our service capabilities, including our highly skilled services teams; our proprietary IP management technologies; as well as our global reach and expertise. Our tested partner network and dedication to workflow optimization provide unmatched transparency, efficiency and speed.

Written by Kathi Garnier, Key Account Manager at Questel.



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