China, Trademarks

Talk To Michael Jordan, Not Michael Bastian, About China Trademarks

If you want to protect 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.

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Earlier this month, fashion blogs (see here, here, and here) were abuzz with news that American fashion designer Michael Bastian had won a “landmark” decision against a trademark squatter in China. The fashion blogosphere was touting a recent China Trademark Review and Adjudication Board decision invalidating 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.

Bastian’s lawyers were saying that this decision marked the first time a non-Chinese party had invalidated a Chinese trademark based on a trademark squatter’s bad faith, and deemed it as providing “a sense of confidence for foreign celebrities entering the Chinese market.” Without taking anything away from their well-justified pride with the outcome, this decision from the China Trademark Review Board has not changed a thing.

The decision was based solely on the fact that the owner of the “Michael Bastian” trademark was a notorious trademark squatter, with 120 trademark registrations and no business related to those trademarks. For years, the Chinese Trademark Office and the Review Board have invoked the bad faith provisions of the Chinese Trademark Law to invalidate trademark-squatter registrations against notorious squatters. If the Chinese owner of the “Michael Bastian” trademark had actually been conducting fashion-related business, he would almost certainly still own that trademark.

Former basketball star Michael Jordan beautifully proves this point. In China, Michael Jordan does not hold the rights to his own name and two courts in China have affirmed this, one just a few weeks ago. Jordan has brought two lawsuits against Qiaodan Sports, a now quite large Chinese company Jordan alleges uses 78 of his trademarks, including Qiaodon, the transliteration of Jordan’s name most commonly used in China, and at least one of his images.

The moral of these two superstars’ stories is the same as it was last week, last month, last year, and last decade. If you want to protect 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.

Dan Harris is a founding member of Harris Moure, an international law firm with lawyers in Seattle, Chicago, Beijing, and Qingdao. He is also a co-editor of the China Law Blog. You can reach him by email at [email protected].

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