Beijing
07 July 2015
Reporter: Mark Dugdale

Designer has the measure of hijacker in China


A foreign menswear designer has successfully blocked a hijacker’s trademark to his name in China despite little evidence of prior use.

Designer Michael Bastian, a victim of trademark hijacking, is the first non-Chinese individual or entity to do so under the principle of honest and good faith, according to his counsel, Foley & Lardner.

The Chinese Trademark Review and Adjudication Board (TRAB) in Beijing overturned the decision of the State Intellectual Property Office to grant a trademark to ‘Michael Bastian’ and a Chinese transliteration to an unrelated entity.

The defendant was found to be a trademark hijacker that has filed many applications for others’ names, or for similar versions.

This behaviour amounted to an abuse of the principle of honest and good faith, and violated the trademark registration, use and administration process under Article 44(i) of China’s Trademark Law.

The TRAB came to this decision even though there was insufficient evidence of Michael Bastian’s use of the trademark or publicity in China prior to the date of filing by the defendant.

Similar reasoning was given in a dispute brought by Yao Ming, a retired Chinese professional basketball player and entrepreneur, but Michael Bastian’s case is the first time that these principles have been applied to foreign individuals, according to Foley & Lardner.

Bastian commented: “This is a huge decision that provides a sense of confidence for foreign celebrities entering the Chinese market. Specifically, it allows me to freely use my name and IP to build out my brand in China. The fashion conscious public in China will now know that Michael Bastian apparel and accessories offered through my channels are the real thing.”

“I hope this sets precedent and makes it easier for other fashion designers and members of the creative community to regain and protect their IP in China.”

Selig Sacks, co-chair of Foley & Lardner’s US and China practice, said of the decision: “While there are distinguishing features in our case, the Michael Bastian decision should give encouragement to the creative community that hopefully the type of adverse trademark decisions in China against Michael Jordan, Britney Spears and others can be avoided. China is a ‘first to file’ trademark jurisdiction.”

“And in combatting squatters it is important to come up with a comprehensive action plan involving skilled international and [Chinese] legal counsel."

More news
The latest news from IPPro The Internet
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
ICE and industry team up to fight IP crime
21 November 2017 | Washington DC | Reporter: Jenna Lomax
US Immigration and Customs Enforcement has teamed up with Intellectual Property Enforcement Coordinator industry representatives and other US government enforcers to counter IP crimes
Alibaba in ITC spotlight
20 November 2017 | Washington DC | Reporter: Barney Dixon
Alibaba will be investigated by the US International Trade Commission over the importation and sale of insulated beverage containers, their labels, and packaging materials
Brexit a “material threat” to businesses, says Marques
20 November 2017 | Leicester | Reporter: Barney Dixon
Brexit could be a “material threat” to businesses that own trademarks in the EU, according to a position paper from intellectual property association Marques
Cozen O’Connor hires ex-DLA Piper litigator
17 November 2017 | Washington DC | Reporter: Barney Dixon
Cozen O’Connor has hired ex-DLA Piper litigator Hugh Marbury as member in its intellectual property department
Illicit streaming devices entering the UK fail to meet national electrical safety regulations, according to findings from FACT and Electrical Safety First
Mewburn Ellis opens Munich office
16 November 2017 | Munich | Reporter: Barney Dixon
Intellectual property boutique Mewburn Ellis has opened a new office in Munich, its first expansion outside of the UK
.UK suspensions doubled in 2017, says Nominet
15 November 2017 | Oxford | Reporter: Barney Dixon
Nominet has suspended 16,632 .UK domain names for criminal activity in 2017, doubling figures from 2016