Last week, fashion blogs (see here, here and here) were abuzz with the news that Michael Bastian, an American fashion designer, had won a “landmark” decision against a trademark squatter in China. Specifically, on April 20, 2015, China’s Trademark Review and Adjudication Board (TRAB) invalidated a trademark squatter’s registration of Bastian’s eponymous mark, even though the squatter had filed first and Bastian apparently had not used the mark in China. According to Bastian’s lawyers, this decision marked the first time a non-Chinese party had invalidated a Chinese trademark based on a trademark squatter’s bad faith.
Bastian and his lawyers characterized this decision as “seminal” and one which “provides a sense of confidence for foreign celebrities entering the Chinese market.” Without taking anything away from their well-justified delight at the outcome, such statements are pure hokum. This decision changes nothing, and if anyone thinks differently, I have a bridge I’d like to sell them.
The TRAB’s decision was based on one fact only: the owner of the “Michael Bastian” trademark was a notorious trademark squatter, with 120 trademark registrations and no apparent business related to those trademarks. The Chinese Trademark Office (CTMO) and the TRAB have invoked the bad faith provisions of the Chinese Trademark Law for years to invalidate trademark squatters’ registrations—but they do so only against notorious squatters, and even then the outcome is a coin-flip. If the previous owner of the “Michael Bastian” trademark had actually been conducting fashion-related business, he would still own that trademark.
It is also important to understand that Michael Bastian is not a celebrity in China. This is no slight on Mr. Bastian’s status in the fashion world or his oeuvre as a menswear designer. I simply mean that he is not a famous name in China, nor is his eponymous brand widely known there. In short, “Michael Bastian” would not qualify as a well-known brand in China, and this decision had nothing to do with Bastian’s fame.
The moral of the story is the same as it was last week, last month, last year, and last decade. If you care about protecting your brand in China, there’s only one thing to do: file a trademark application in China now, before someone else does it for you. Even if you’re a celebrity.