It is well known that the former NBA superstar Michael Jordan had initiated numerous proceedings against Qiaod Dan Sports Co. Ltd (“Qiaodan Sports”) in China since 2012 concerning infringement of his name and other rights. Michael Jordan is commonly known as “喬丹” in the Chinese characters (pronounced as “Qiaodan” in Mandarin) and “喬丹/Qiaodan” is the transliteration of his name “Jordan” in Chinese.
These proceedings concern a number of registered trademarks in China including “喬丹/ Qiaodan /
” owned by Qiaodan Sports (“Qiaodan Trademark Disputes”). The Supreme People’s Court in China recently delivered another judgment on the word and device mark “
” in class 25 registered by Qiaodan Sports (PRC Trademark No.6020578, the “Subject Mark”). It was held that the Chinese words “喬丹” violated Michael Jordan’s name rights and Article 31 of the China Trademark Law. This final judgment of the Supreme People’s Court overturns previous decisions in the lower courts, and the China National Intellectual Property Office must now re-examine registration of the Subject Mark.
Background
For a better understanding of the trademark dispute, we set out a brief timeline concerning the registration of and appeals against the registration of the Subject Mark below :-
1. Registration of the Subject Mark
On 26 April 2007 (“Application Date”), Qiaodan Sports applied to register the Subject Mark with the China Trademark Office (the predecessor of the China National Intellectual Property Office). On 21 April 2010, the China Trademark Office approved the registration of the Subject Mark in class 25 for clothing, swimwear, shoes and other commodities for a period of 10 years.
2. Decision of the TRAB
On 31 October 2012, Michael Jordan filed a request to cancel the Subject Mark with the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (“TRAB”), which was responsible for handling disputes involving decisions of the China Trademark Office. The TRAB affirmed the China Trademark Office’s decision to allow registration of the Subject Mark.
3. Decision of the lower courts
To appeal against the TRAB’s decision, Michael Jordan filed an administrative lawsuit with the Beijing Intermediate People’s Court on 23 September 2014 and lost the case. On 30 March 2015, Michael Jordan further appealed to the Beijing Higher People’s Court and lost the case as well. Both the Beijing Intermediate People’s Court and the Beijing Higher People’s Court ruled, among others, that “Jordan” was a common American surname and that Qiaodan Sports did not exclusively referred to Michael Jordan.
Judgment of the Supreme People’s Court
On 17 November 2015, Michael Jordan further appealed to the Supreme People’s Court and on 26 March 2020, he was finally successful in obtaining a final judgment published on 8 April 2020 in his favour regarding his name rights.
The Supreme People’s Court considered that Michael Jordan is well-recognized in China and is familiar among the relevant public in China. The public recognition of Michael Jordan exists before the Application Date of the Subject Mark until 2015 (the year of the appeals to the Beijing Higher People’s Court and the Supreme People’s Court). Such recognition is not limited to the field of basketball, and in fact Michael Jordan has become a high-profile public figure. The relevant public in China usually know “喬丹” as Michael Jordan, and as such the Supreme People’s Court recognized an established link between “喬丹” and Michael Jordan.
Further, the Supreme People’s Court referred to Article 99 of the China Civil Law and Article 2 of the China Tort Law under which recognize individual’s right of his personal name. Qiaodan was fully aware of Michael Jordan’s reputation in China but still proceeded with registration of the Subject Mark containing the words “喬丹”. Such registration may easily lead the relevant public to mistakenly believe that goods or services under the Subject Mark was authorized or endorsed by Michael Jordan and consequently, causing damage to his name rights.
In light of the above, the Supreme People’s Court overturned all the decisions of the Beijing Intermediate People’s Court, the Beijing Higher People’s Court and the TRAB. Further, the Supreme People’s Court ordered the China National Intellectual Property Office to re-examine the registration of the Subject Mark.
Side Note
While Michael Jordan won his name rights in the above final judgment and registration of the Subject Mark will be re-examined by the China National Intellectual Property Office, the Supreme People’s Court however confirmed the decisions in the lower courts that the device “” in the Subject Mark did not violate the portrait right of Michael Jordan. The Supreme People’s Court considered that it was difficult for the public to identify the device “” as Michael Jordan’s image as there were no facial features in the device.
In other words, Qiaodan Sports may continue to use the device “” despite that the device is considered to be associated with Michael Jordan’s iconic “Jumpman” logo (ie “
”) featuring his silhouette when performing a dunk.
Takeaways
The above decision of Supreme People’s Court follows the ruling of another Qiaodan Trademark Disputes case in December 2016 and reaffirms the name rights of Michael Jordan. It can be seen in this and other trademark disputes involving celebrities that personal name rights are now firmly established in the laws of China if the fame or reputation of such individuals in China can be established.
Some commentaries went further and see the present case as part of China’s effort to honour the intellectual property rights outlined in Phrase-one of the trade deal with the United States. We should monitor on how the trade deal may shape the development of intellectual property laws in China.
If you have any queries regarding the above eNews or any other questions relating to the intellectual property registrations or enforcements in Hong Kong or China, experienced lawyers in our Intellectual Property department will be pleased to assist you.