The Supreme People’s Court in China issued another decision favorable to basketball legend, Michael Jordan, in March 2020 in the long-running dispute between Michael Jordan and a Southern China-based company, Qiaodan Sports Co Ltd (“Qiaodan Sports”).

Background and Previous Rulings

The long legal battle between Michael Jordan and Qiaodan Sports started in 2012 and has attracted a great deal of attention!

Qiaodan Sports, a company established in 2000, has registered a series of trademarks related to Michael Jordan including “乔丹” (the Chinese name of Michael Jordan), “Qiaodan” (the pinyin transliteration of “乔丹”) and a logo resembling the silhouette of Michael Jordan. Qiaodan Sports has even registered “杰弗里乔丹” and “马库斯乔丹”, which are the transliteration of the Chinese names of Michael Jordan’s sons.

Since 2012, Michael Jordan started to take actions against Qiaodan Sports for the unauthorized registrations and use of his name, silhouette, jersey number 23, etc and commenced around 70 trademark invalidation actions against the trademark registrations of Qiaodan Sports. As China adopts a first-to-file principle in its trademark registration system, Michael Jordan almost lost all the invalidation cases as he did not have any prior applications or registrations for any marks identical or similar to the disputed marks.

Michael Jordan argued in the invalidations against Qiaodan Sports that the use of the Michael Jordan’s related registered marks would mislead consumers that the goods of Qiaodao Sports were authorized by or otherwise associated with Michael Jordan. The Trademark Review and Adjudication Board, the Beijing No. 1 Intermediate People’s Court and the Beijing High Court all came to the view that “Jordan” was a common surname which was not readily and uniquely associated with Michael Jordan. Although Michael Jordan has been known to many of his Chinese fans and consumers by his Chinese name “乔丹”, it was decided that there was no exclusive link between Michael Jordan and “乔丹”/“QIAODAN”.

Finally, in 2016, the Supreme People’s Court (“SPC”) made a ruling in favor of Michael Jordan in an appeal he filed with SPC. SPC accepted that “乔丹” was well-recognized in China and that there was an established link between “乔丹” and Michael Jordan. SPC therefore ruled that Michael Jordan enjoyed the rights of name over “JORDAN” in Chinese characters i.e. “乔丹” and SPC ordered Qiaodan Sports’ registration for the trademark “乔丹” to be invalidated. Unfortunately, Michael Jordan’s claims for protection on “QIAODAN” was rejected as SPC ruled that they could not find an established link between Michael Jordan and “Qiaodan” as this pinyin transliteration did not solely correspond to the Chinese characters “乔丹”.

2020 Decision

Another invalidation action filed by Michael Jordan involves the trademark   under trademark registration no. 6020578 in class 25. Michael Jordon again lost in all the lower courts in this invalidation and he appealed to SPC. In March 2020, SPC made a ruling that this class 25 registration should be invalidated.

SPC accepted that “乔丹” had a high reputation in China and the relevant public would usually refer to Michael Jordan by the Chinese name “乔丹” . Hence, SPC held that a corresponding relationship had been formed between “乔丹” and Michael Jordan and Michael Jordan enjoyed the name rights in “乔丹”. SPC also held that Qiaodan Sports was fully aware that Michael Jordan had a long-term and widespread reputation in China, but still used “乔丹” as part of the disputed trademark, which might mislead the relevant public into believing that the goods marked with the disputed trademark were endorsed or licensed by Michael Jordan, thereby damaging the prior name right of Michael Jordan. SPC ruled that the registration of the disputed trademark was in breach of Article 31 of the Trademark Law and should be invalidated. The March 2020 decision is consistent with the ruling of SPC in 2016 that a trademark consisting of “乔丹” (Jordan’s Chinese name) only is a violation of Michael Jordan’s rights.

Michael Jordan also claimed protection on his portrait rights with respect to the device part of the disputed mark in this case arguing that the device is similar to his silhouette. However, SPC, concurring with the lower courts’ decisions regarding the silhouette, held that “portraits” protected by portrait rights should be recognizable and should contain enough personal characteristics for the public to identify the corresponding subject. SPC found that the device in the disputed trademark was just a black human-shaped silhouette and apart from the body outline, it did not contain any personal characteristics relating to Michael Jordan. Furthermore, SPC held that Michael Jordan did not enjoy any other legal rights on the corresponding movement as shown in the device and other people could make identical or similar movement. It was therefore decided that the device part of the disputed mark did not identify or represent Michael Jordan and the disputed mark did not infringe the portrait rights of Michael Jordan.

Conclusion

The latest victory for the basketball legend is encouraging for brand owners especially overseas owners and celebrities. The decision shows that the Chinese courts are willing to consider all factors and evidence. The victory does not however come easily, and much time and effort has been spent in the 8 years’ legal battle. Further, it is not a complete victory for Michael Jordan since he has lost in most of the invalidation actions and many of the registrations of Qiaodan Sports cannot be revoked as they have been registered for more than 5 years. The courts also ruled that Qiaodan Sports could keep the registrations for trademarks using “Qiaodan”(the pinyin transliteration of “乔丹”) and the silhouette. More importantly, it is not the end of the legal battle between the two parties. It is unclear whether Michael Jordan can prevent Qiaodao Sports from using his name in Chinese and even the pinyin transliteration. This will have to be dealt with in separate proceedings. There is a pending court action which Michael Jordan has commenced against Qiaodan Sports hoping to prevent Qiaodan Sports from using Michael Jordan’s name on its products and we will keep an eye on the development of the case.

This is yet another case to remind foreign brand owners the importance of having an official Chinese version of their brands and register the Chinese version including the translation and transliteration as well as any unique design in Mainland China as a priority to ensure that they are well protected against trademark squatters.