Men’s wear label Michael Bastian has won the right to use its trademark in China, the first time a foreign company has been able to wrest away the rights to a name from a third-party squatter.
The name “Michael Bastian” and its Chinese transliteration had been trademarked by a third party in 2007 but a breakthrough legal decision from the Chinese Trademark Review and Adjudication Board, overturned it and sided with the brand, putting an end to a five-year legal battle.
The TRAB decision stated that the other party had lodged many trademark registrations and it was “evident that it carried ill intentions.”
“They’d filed more than 100 similar-sounding or close to other designers names like Louis Vielly,” said Andrew Su, a lawyer at Grandall Law Firm, who advised Michael Bastian on the case.
Su added that there would be no appeal. “I confirm the time limit for filing appeal against the TRAB decision expired and no appeal [was] filed by the other party,” he said.
Chinese operates on a first-to-file basis unlike the U.S. and other Commonwealth countries where the registrant is asked to show how they have used or plan to use the trademark. That has led to squatters registering trademarks in the dozens or hundreds, hoping for a hefty payout from brands that otherwise must battle it out in the legal system, a process that could take years.
Although celebrity basketball player Yao Ming was successful in winning back the rights to use his name, this is the first instance of the TRAB deciding in favor of a foreign entity. Other foreign brands that have struggled to gain control over their name in China include art auction house Sotheby’s, pop singer Britney Spears and NBA stars Michael Jordan and Kobe Bryant.
“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,” said Bastian. “The fashion-conscious public in China will now know that Michael Bastian apparel and accessories offered through my channels are the real thing.”
“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,” said Selig Sacks, cochair of Foley & Lardner LLP’s U.S.-China practice who also provided legal counsel to Bastian.