Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China. In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties.
Facts and Ruling
From 2000 onwards, Qiaodan Sports Co. Ltd. (“Qiaodan Sports“) registered a number of trademarks including, “乔丹”, “QIAODAN” and a logo which was resembling Nike’s famous “Jumpman” logo. The original “Jumpman” logo is owned by Nike Inc. to promote its “Air Jordan brand” of basketball shoes and comprises a silhouette of Michael Jordan performing a slam dunk. In 2012, Michael Jordan sued Qiaodan Sports for infringement of his name rights in China. He asked the Chinese authorities to invalidate the registered trademarks “乔丹”, “QIAODAN” and the corresponding logo mark arguing that Qiaodan Sports’ trademarks are misleading consumers in the People’s Republic of China in a way that consumers may believe that these sport products like shirts, sport shoes and sport apparel sold by Qiaodan Sports are licensed or otherwise authorized by Michael Jordan.
The Trademark Review and Adjudication Board, the Beijing No. 1 Intermediate People’s Court and the Beijing High Court consistently came to the view that “Jordan” is a common American surname which is not readily and uniquely associated with Michael Jordan. The lower courts also perceived no exclusive and definitive link between Michael Jordan and “乔丹” and the sign “QIAODAN”. However, Michael Jordan decided to recover the valuable commercial rights in his name by appealing to the Supreme People’s Court.
Rulings of the Supreme People’s Court
Favorable Decision – “乔丹”
In these appellate proceedings Michael Jordan could successfully demonstrate that the sign “乔丹” is well-recognized in China and clearly associated with Michael Jordan personally. The Supreme People’s Court recognized an established a link between “乔丹” and Michael Jordan, and that Qiaodan Sports had “malicious intent” in registering “乔丹” as a trademark when it was fully aware of Michael Jordan’s reputation in China. Therefore, the use of “乔丹” by Qiaodan Sports infringed upon Michael Jordan’s prior rights in his name and the Supreme People’s Court ordered the “乔丹” trademark registration to be invalidated.
Unfavorable Decision –”QIAODAN”
“QIAODAN” is the English transliteration of “乔丹”. The meanings of “QIAODAN” and “乔丹” are identical. However, from the perspective of trademark use, the Supreme People’s Court could not find an established link between “QIAODAN” and Michael Jordan, as naturally Michael Jordan would not have used “QIAODAN” in any manner. The Supreme People’s Court therefore concurred with the lower courts’ decisions in the invalidation actions against “QIAODAN” and related formative trademarks in favor of Qiaodan Sports.
A Look Ahead
Michael Jordan’s success in recovering his Chinese name “乔丹” serves as an encouraging precedent to brand owners.
At least the Supreme People’s Court is seen to have considered all relevant circumstances, in particular the fairness and commercial value behind the name, in order to reach a finding that Michael Jordan can have his long lost Chinese name back as a trademark that is likely to be worth millions of dollars. The applicable laws and provisions have not changed.
The Chinese authorities and courts are willing to see and listen. The key to success is for foreign brand or name owners to present sufficient evidence to support their rights and show bad faith on the part of the trade mark squatter. Michael Jordan’s case and other similar cases involving brand owners such as New Balance and Hermès, emphasize the need for foreign brand owners to identify and register a Chinese version of their brands be it as a translation or as a transliteration as soon as possible, in order to ensure that they are protected against trade mark squatters.
This article was originally published on AllAboutIP – Mayer Brown’s blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.