Although controversies about whether a market survey can be evidence in proof of reputation of a trademark had been going on, the Supreme People’s Court in its retrial cases as regards essentially the ownership of the Chinese transliteration of “Jordan” took a big step forward by siding with Michael Jordan, “the greatest basketball player of all time”. In the series of cases, Michael Jordanrequested the Trademark Review and Adjudication Board (“TRAB”) to revoke the Chinese trademark “乔丹” (Chinese transliteration of “Jordan”) in 2012, of which the registrant is Fujian Qiaodan Sports Company. The requests were rejected by the TRAB and Michael Jordan further lost in the following first and second instances, he requested retrials with the Supreme Court.
To show the ownership of the Chinese trademark, the plaintiff submitted a market survey conducted in five different cities, namely in Beijing, Shanghai, Guangzhou, Chengdu and Changshu, regarding who the public would associate the Chinese name “乔丹” to and how the public would judge upon the relation between Michael Jordan and Fujian Qiaodan Sports Company. The Supreme Court ruled that the market survey could prove that stable corresponding connection between the Chinese name “乔丹” and Michael Jordan had been established, and the related public would associate the Chinese name “乔丹” with Michael Jordan. The whole process of the market survey was notarized by the notary public, and was accepted by the court as an effective piece of evidence in proof of the reputation of Michael Jordan in China and the stable corresponding relation between the Chinese name “乔丹” with Michael Jordan.
Market surveys have been admitted as effective evidence in other civil infringement cases. For example, in false advertisement cases, it had been submitted to show how the related public would feel about the advertisements and right of reputation. However, it is still not widely accepted in trademark cases in China. That’s way the Judicial Ministry of China regarded this case in January 30, 2018 as a significant one about the admission of a notarized market survey in intellectual property cases.
This case doesn’t mean an end of the controversies. Is the issue of trademark reputation a legal one or a factual one? Should the issue of similarity between two trademarks be decided by the related public, or by the court after taking all the relevant factors into consideration and applying the examination criteria according the special circumstances in each case? There are also concerns about the credibility of the investigators conducting surveys. Are interviewees selected by random or by preference? And how the preference would affect the results of the market survey and then the judgement of the legal issues? The Supreme People’s Court’s verdict provides a very good precedent and guidance to Chinese trademark attorneys, who would like to introduce market survey into their daily practice of the law.