Manolo Blahnik has conquered a 22-Year long trademark battle in China against a Chinese businessman Fang Yuzhou (“Yuzhou”), who registered the trademark “Manolo & Blahnik” in the footwear category.
Preposterous and illogical one might think, however, Chinese trademark law follows, akin to Japan, Germany, and the European union, the principle of first-to-file (“FTF”). FTF establishes the right to a trademark based on which applicant has the earliest date of filing. Contrarily, countries like Canada, the United States and Australia adhere to the principle of first-to use (“FTU”), which in essence established the right to use a trademark. Therefore, in terms of FTU, as long as proof is submitted, the right to register a trademark vests in the party who used the trademark first on a commercial scale.
Since China uses FTF and requires no proof of use prior to registration, many brands are left ready for the picking such as Yuzhou.
Fortunately for Manolo Blahnik, due to a great deal of pressure from brand-owners, as well as the Chinese trademark office, amendments to China’s trademark law have been incorporated to address the rampancy of squatting. Based on these amendments, Manolo Blahnik was able to overcome the FTF principle.
One might ask, all is good and well in China but what about South Africa? Well, South Africa also follow FTF, however, in terms of section 10(3) of the Trade Marks Act (Act 194 of 1993) (“Trade Marks Act”), a mark in relation to which the applicant for registration has no bona fide claim to proprietorship may not be registered or, if registered, may be removed by the register. Accordingly, had Yuzhou applied his squatting tactics here, he might have met his match many moons ago.
Consider the following hypothetical scenario– Yuzhou filed a legitimate and bona fide trademark for “Manolo & Blahnik” in the clothing, footwear, and headwear category (class 25) and uses it accordingly. However, absent a trademark Manolo Blahnik has been using this trademark for many years, both prior and after the registration of Yuzhou’s.
Would Manalo Blahnik be able to obtain a trademark in these circumstances?
The answer is yes! In terms of section 14 of the Trade Marks Act, Manolo Blahnikm may, on application, obtain registration for “Manolo & Blahnik” based on its honest and concurrent use despite a previous registration by Yuzhou.
If someone has jumped the gun on your magnificent idea or you are suffering the prejudice due to a trademark squatter, it is advisable to contact your intellectual property lawyer.
BY STEFAANS GERBER
