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."

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