On December 8, 2016, the Supreme People’s Court of China (the “Supreme Court”) ruled on the disputes between the retrial petitioner (the plaintiff in the first instance), Michael Jordan, and the respondent (the defendant in the first instance), the China Trademark Review and Adjudication Board (the “TRAB”) and the respondent (the third party in the first instance), Qiaodan Sports, Co. (the “Qiaodan Sports”), holding that three trademarks of Qiaodan Sports for the Chinese characters of the translation of “Jordan” are invalid as infringing upon the name rights of Michael Jordan, and reversed the relevant decisions made by the Beijing High Court.
The claim raised was that Qiaodan Sports had maliciously registered trademarks for the use of Jordan’s surname under different classes in different ways and built its business almost entirely on that goodwill. Although Qiaodan Sports had significant investment in the brand for nearly a decade, Jordan prevailed over his name rights in Chinese characters. Elsewhere, the Supreme Court ruled in seven parallel cases that Michael Jordan had no rights over the Chinese pinyin transcription (i.e. Chinese phonetic spelling) of his surname, i.e., “QIAODAN” and “qiaodan;” and therefore upheld the decisions of the Beijing High Court regarding these seven cases.
Article 31 of the Trademark Law (2001) reads, “no trademark application shall infringe another party’s prior existing rights”. Said “prior existing rights” refer openly to any prior rights such as copyrights, design patent rights, trade dress.The Supreme Court held that a name right of Article 99 paragraph 1 of the General Principles of Civil Law could be such a prior right. Article 99 paragraph 1 of the General Principles of Civil Law recites that “citizens shall enjoy the rights of a name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited.” Further, the Court held that Article 2 of the Tort Law also supported that a name right could be a prior right.
The key point of the three cases essentially relates to whether Michael Jordan enjoys the right to use the Chinese characters of the translation of his surname “Jordan” and the extent of such a right, if any.
The Supreme Court, when finding that the Chinese name for “Jordan” constitutes prior right in the context of the Trademark Law, considered the following factors:
(1) The specific name has a reputation in China and is well-known to the relevant public;
(2) The relevant public uses this specific name to refer to the natural person; and
(3) There is a stable correspondence between the specific name and the natural person.
Evidence showed that “Jordan” in its Chinese characters enjoyed wide popularity in China and had been used on various occasions to refer specifically to Michael Jordan. Two surveys submitted by the plaintiff showed that, 85% and 63.8% of the interviewees acknowledged that when the Chinese name of “Jordan” was mentioned, the first thought would be connected to the plaintiff himself, not the defendant. A stable correspondence between the plaintiff personally and the Chinese characters of the translation of the plaintiff’s surname had been established. Therefore, the Supreme Court held that Jordan had the right to use the Chinese character translation for Jordan.
The Court found the name right of Jordan extended to the goods over which the three trademarks were registered, which would bring confusion to relevant consumers. The TRAB was ordered to reconsider the validity of the related trademarks and make new decisions.
The Supreme Court’s ruling affirms that the right to use a name of a person is a prior existing right under the Trademark Law and a registered trademark shall not infringe another’s right to use his name. It is clear that the extent of the right to use a name is variable and shall be determined on a case by case basis.
It should be noticed that an invalidation request over a prior name right is subjected to a five-year statutory period under the Trademark Law. For a celebrity well-known in China, not only his/her foreign name but also his/her Chinese name and his/her pinyin name are of great commercial value in China. It is therefore necessary to develop a proactive trademark strategy in China as early as possible.