Final Judgment

On December 8, 2016, the Supreme People’s Court announced its judgment in 10 administrative litigation cases concerning the “Jordan” series of trademarks in Chinese characters. The case involves the applicant, Michael Jordan, and a third party, Qiaodan Sports Co., Ltd.

The Court held that registration of the mark , “乔丹,” may damage Mr. Jordan’s name right where Mr. Jordan’s English name and Chinese name, “乔丹,” enjoy a high reputation in China.

However, the Court stated that the evidence is not sufficient to prove that the relevant public uses the Chinese Pinyin, “Qiaodan,” to refer to Mr. Jordan or that there a sole relationship has been established between “Qiaodan” and Mr. Jordan. Thus, Mr. Jordan does not enjoy a prior name right over the Chinese Pinyin, “Qiaodan”.

The Court decided to cancel the first and second instance judgments and requested the TRAB to re-examine three dispute actions against the “Jordan” trademark in Chinese characters. The Court maintained the second instance judgments concerning seven dispute actions against the trademarks, “Qiaodan” and “Qiaodan” with a device part.

Procedural History

Qiaodan Sports is a local sports company that enjoys a high reputation in its business area. They have trademark registrations in Classes 25 and 28 for 1) the “Jordan” mark in Chinese characters, 2) “Qiaodan,” and 3) “Qiaodan” with a device part.

Mr. Jordan, is a famous basketball player in the USA. In 2012, Mr. Jordan requested the TRAB to cancel the disputed marks based on his prior name right. However, the TRAB maintained the marks’ registration.

Mr. Jordan appealed the TRAB’s decisions to the Beijing No. 1 Intermediate Cour, and Beijing High Court but was unsuccessful in the first and second instance.

Mr. Jordan took his appeal to the Supreme People’s Court. In December 2015, the Court decided to bring the 10 cases to trial.

On April 26, 2016, the Court tried the case regarding the “Jordan” series of trademarks in Chinese characters; the chief judge was Vice-president Tao Kaiyuan. The trial lasted 4 hours.

Commentary

Under Article 32.1 of the 2013 China Trademark Law (Article 31.1 of the 2001 China Trademark Law), a trademark application shall not infringe upon another person’s existing prior rights.

A prior name right falls under this category. The opponent must prove that 1) the disputed mark is the same as the opponent’s name; and 2) the disputed mark’s registration has caused or may cause damage to the opponent’s name.

As here, where Mr. Jordan’s name is in English, “same” includes the relevant public’s translation of the opponent’s name.

To determine whether a disputed mark infringes a prior name right, the Court will consider the owner’s reputation amongst the relevant public.

It is important to note that “Qiaodan” is the Chinese Pinyin for “乔丹”(Jordan in Chinese characters). “Qiaodan” is not the translation of “Jordan.”

The relevant public uses “乔丹” to refer to Jordan, not ”Qiaodan.” Thus, Mr. Jordan was unable to prove a sole association with “Qiaodan.”

Because Qiaodan Sports and its marks enjoy a high reputation amongst the relevant public, the Court may have given weight to Qiaodan Sports and the relevant public interest.