This is a very important decision because it sets a strong judicial precedent for foreign companies seeking to protect their intellectual property rights in China.
On 8 December 2016, overturning the lower court decisions against Michael Jordan in a lengthy trademark dispute in China, the Chinese Supreme People’s Court rules that Jordan owns the legal rights to his Chinese surname, “乔丹”, which is the Chinese equivalent of “Jordan”. This Chinese name is shown in pinyin, the official system which is used to transcribe Chinese characters into Latin script, as “Qiaodan”. While Jordan registered trademarks for his English name in China as far back as 1993, he never applied for any registered trademarks for “乔丹” nor for its pinyin representation “Qiaodan”.
Qiaodan Sports, a family-owned business based in the Fujian province, first applied to register the name Qiaodan when it applied to use the name with the logo of a baseball player at bat. It also filed several trademark applications for “乔丹” and “Qiaodan”, which were approved for registration in 1998. Qiaodan Sports has been using its 乔丹 and Qiaodan brands since 2000 and has made significant brand-building efforts over the years. Qiaodan Sports currently owns about 6,000 shops in China which trade under its name.On 21 February 2012, just as Qiaodan Sports was set to debut on the stock market, Michael Jordan cried foul and commenced proceedings against Qiaodan Sports for the unauthorised use of his name at Shanghai No.2 People’s Intermediate Court. He claimed that Qiaodan Sports was illegally using his Chinese surname and his jersey number 23 on their products without his permission. Since Michael Jordan has never registered any trademarks for his Chinese surname, his claim is based on the grounds that Qiaodan Sports’ use of his Chinese surname was in breach of his rights in his Chinese surname. Jordan claimed that Qiaodan Sports was improperly using his publicity rights to build its brand and sell its goods, demanded that Qiaodan Sports stop using his name and the related trademarks, and sought damages. Jordan also claimed that the relevant trademark registrations of Qiaodan Sports misled consumers to believe that there was connection between him and the brand, and he asked for such registrations to be removed from the Trademark Office of the State Administration for Industry and Commerce in China.
Lower courts did not accept Jordan’s argument that Qiaodan Sports’ use of Jordan’s Chinese surname would associate Jordan with the brand and ruled in favour of Qiaodan Sports. For more details, please see our earlier reports: Naming Rights and Trademarks Disputes between Michael Jordan and Qiaodan Sports; and Register Your Trademarks in Chinese Now: Lessons from Michael Jordan’s Defeat in Trademarks Combat against Qiaodan Sports.
Jordan appealed against the rulings of the lower courts and won at the Supreme People’s Court, which revoked the rights of Qiaodan Sports to use “乔丹”. The Supreme People’s Court decided that Jordan’s surname in Chinese characters was well recognised in China, so he should have the legal right to it. Qiaodan Sports will have to give up its trademark registrations of “乔丹”. The court directed the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce in China to revoke Qiaodan Sports’ relevant trademark registrations of “乔丹”, the Chinese characters of Jordan’s surname. However, the same judgement rejects Jordan’s claim for his right to “Qiaodan”, the Chinese pinyin version of his surname, mentioning that the pinyin (romanised) form of Jordan’s Chinese surname is not associated with Jordan by the Chinese public, and that no close connection between Jordan and “Qiaodan” has been proven. Also, judgment of a separate lawsuit is still pending at a Shanghai court, where Jordan is seeking damages for unauthorised uses of his name.
In brief, the present decision invalidates the trademark of a very large Chinese sportswear company and, therefore, will likely deter trademark squatters. International brands and celebrities will also be able to rely on this judgement as precedent if Chinese companies try to use their names in connection with the manufacturing or sale of goods or services.
The issues in this litigation provide an important Chinese copyright lesson for foreign brands and celebrities entering the Chinese market – failing to file trademark applications in China at the earliest possible date is a mistake which many overseas brand owners continue to make, despite the fact that China has clear and well-established rules giving preference to the party who is first to file. A prudent trademark protection strategy should involve devising and filing to protect the Chinese language version of their mark. With respect to the particular situation of a foreign celebrity, they should not assume that their naming rights necessarily extend to Chinese equivalents of their name, such as”乔丹”, or the pinyin representation of their name, such as “Qiaodan”. As well as registering their name in Latin characters, celebrities should, at an early stage, invest time and money in registering the Chinese equivalent of their name in order to avoid third parties in China from registering it before they do.
