The Supreme People’s Court took these cases and held a public hearing in April this year, and this morning (December 8th), the SPC publicly announced its decisions, which reversed in part and affirmed in part. Beijing East IP took a close look at the decisions and summarized the revered decisions as below:
The primary issue of these trademark retrial cases is: whether the disputed registrations damaged Michael Jordan’s name right.
The Supreme People’s Court’s derived the main issue into eight specific questions and reasoning. Beijing East IP summarized them into four takeaways.
1.Whether Michael Jordan (“MJ”) enjoys name right to “Qiaodan in Chinese.”
When applying a trademark filing “shall not create any prejudice to the prior right of another person” under Article 31 of the 2001 Chinese Trademark Law (Article 32 of the 2013 Chinese Trademark Law) in a trademark administrative dispute, an individual who claimed name rights shall satisfy the following three factors:
First, the claimed particular name shall reach certain fame in China and be known to the relevant public.
Second, the relevant public uses that particular name to refer to that individual.
Third, that particular name has created a firm correspondence relationship with that individual. Even if this correspondence has not reached the level as the “only” relationship, that individual’s name right can still be protected under the laws.
Therefore, when determining whether a transliteration of a foreign individual’s name can be protected, the Chinese relevant public’s habit of referring to or calling a foreign individual shall be considered. In this case, both “Qiaodan in Chinese” as claimed in these retrial cases, and “MaiKeEr Qiaodan in Chinese” as mistaken by the TRAB (Trademark Review and Adjudication Board) for MJ’s full name were just parts of MJ’s legal name “Michael Jeffrey Jordan.” These two Chinese “names,” though not MJ’s legal name, have been used by the relevant Chinese public to refer to or call MJ. Thus, MJ’s claims satisfied the three factors and can legally claim name right protection under the Trademark Law.
In determining the correspondence relationship between MJ and “Qiaodan in Chinese,” the Court adopted the two surveys submitted by MJ and held the surveys combined with other evidence can further prove that relevant public is likely to mistaken “Qiaodan in Chinese” is particularly associated with MJ. Moreover, the surveys were properly notarized, and laid out a detailed explanations on process of selection of the target audiences, survey methods, sampling, process, results, and other procedures. Also included are “technical description,” “surveys,” and survey “cards.” Combining the above, the authenticity and the probative value of the surveys’ results are higher, and can be used in combination with other evidence to prove relevant facts.
2. Whether MJ and its licensee Nike Inc. actively used “Qiaodan in Chinese.”
When applying Article 31 of the 2001 Chinese Trademark Law for name right protections, an important factor to determine whether the disputed trademark registration damaged that individual’s name right is the likelihood of the relevant public mistaken the goods or services labeled with the disputed trademarks have a specific association (e.g. endorsement or licensing) with that individual. An individual who can prove that its name falls under Article 31’s protections has a right to claim for protection of that name even if that individual is not actively using this name.
Applying the above factors, because both “MiKeEr Qiaodan in Chinese” and “Qiaodan in Chinese” have higher fame among the relevant public, and both have been used to refer to MJ, and MJ never raise an objection against it. A non-active use of “MiKeEr Qiaodan in Chinese” and “Qiaodan in Chinese” will not keep MJ out from claiming his rights under Article 31.
3. Whether Qiaodan Sports Co. has objective bad faith when filing the disputed trademarks.
The objective bad faith of Qiaodan Sports Co. when filing the disputed trademarks is one of the most critical factors this Court considers when determining whether the registration of the disputed trademark damaged MJ’s name right.
First, Qiaodan Sports Co. was originally named “Fujian Province Jinjiang Citiy Chen Tai Riverside Commodity Factory,” which had nothing associated with “Qiaodan in Chinese.” Qiaodan Sports Co.’s primary business is highly related to MJ’s profession and should have certain degree of understanding of MJ and its fame.
Second, Qiaodan Sports Co. cannot provide just and reasonable explanations for filing and registering the disputed trademarks.
Third, Qiaodan Sports Co. and its related companies subsequently registered series of other trademarks including “Qiaodan in Chinese” mark, MJ’s jersey number “23,” and especially the name of MJ’s two children, which highlighted its objective bad faith.
4. What have Qiaodan Sports Co.’s operations, trade name, promotions, use, awards, and protection records of its trademarks, and other circumstances affected the outcome of this case.
When determining whether the disputed trademark’s registration damaged other’s prior name right, the key factor is the likelihood to cause relevant public to mistake the disputed trademark’s goods or services have specific connection with the owner of the claimed name right, such as endorsement or licensing relationship. Thus, even if Qiaodan Sports Co. has operated, promoted, and used for many years of its trade name and trademarks, which allows relevant public to recognize the goods labeled with “Qiaodan in Chinese” originated from Qiaodan Sports Co. Such facts, however, is insufficient to prove that the relevant public would not mistake the disputed trademark’s goods or services to have specific connection such as endorsement or licensing relationship with MJ. In fact, Qiaodan Sports Co.’s registration of MJ’s jersey number “23,” MJ’s children’s names, and other material closely related to MJ shows Qiaodan Sports Co. in a certain degree disregarded the damaging result of mistaken the relevant public.
Thus, Qiaodan Sports Co. has obvious objective bad faith in filing and registering the disputed trademarks. Its operations, trade name, and promotions, use, awards, and protection records, and other circumstances cannot give its filings and registrations of the disputed trademarks the legitimacy Qiaodan Sports Co. is looking for.