Foley secured a seminal victory on behalf of Michael Bastian (Council of Fashion Designers of America Menswear Designer of the Year 2011) in a trademark dispute before the Chinese Trademark Review and Adjudication Board (TRAB) in Beijing. As a result, Michael Bastian is now free to use his name and intellectual property to build out his brand in China without fear that someone else has trademarked his name. This represents the first time a trademark registration application has been rejected In China in favor of a non-Chinese individual or entity based on the Principle of Honest and Good Faith.
The TRAB’s decision in Michael Bastian’s favor reversed the China Trademark Office’s decision in favor of the defendant, an unrelated Chinese entity, that previously filed to register the name “Michael Bastian” and Chinese transliteration. The TRAB held that the opposing party had abused the trademark registration, use and administration in China 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.
Further, the TRAB determined that the defendant violated the Principle of Honest and Good Faith and abused the trademark registration, use and administration process under Article 44 (i) of the Trademark Law.
In reaching its decision, the TRAB cited that the defendant had engaged in similar conduct and attempted to file many trademarks with or similar to others’ prior names or trademarks. Similar reasoning was brought in a case by Yao Ming, the retired Chinese professional basketball player and entrepreneur. This is the first instance that similar principles have been applied on behalf of foreign individuals.
“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,” said Michael Bastian, CFDA Menswear Designer of the Year 2011. “My thanks to Selig Sacks, Rob Weisbein and their team at the law firm Foley & Lardner LLP who, working with Xiaonan (Andrew) Su and Ji (Jeffrey) Liu at Grandall Law Firm (Beijing), delivered this extraordinary result. 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.”
According to Selig Sacks, Co-Chair of Foley's U.S./China Practice, "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 PRC legal counsel."
The Foley team was led by Selig Sacks and Rob Weisbein, who worked alongside co-counsel Xiaonan (Andrew) Su and Ji (Jeffrey) Liu of Grandall Law Firm (Beijing).