The Supreme People’s Court (SPC) has ruled in favour of Michael Jordan in a case concerning the Chinese character “乔丹” (Qiaodan) in class 25. Ling Zhao of the MARQUES China Team reports.

Qiaodan, Jordan in Chinese characters, plus device

In March 2020, the SPC issued decision (2018) Zui Gao Fa Xing Zai No 32, making a final judgment in the trade mark dispute over the registration number 6020578 (pictured right) in class 25 covering the goods “clothing, shoes, hats, socks, etc.” between Michael Jordan and Qiaodan Sports, a Chinese company.

As readers may recall, the earlier Jordan trade mark dispute, with a final ruling by the SPC on 7 December 2016, concerns Chinese trade mark registration number 6020569 “乔丹” (Qiaodan, Jordan in Chinese characters) in class 28, which was announced as Guiding Case No 113 by the SPC on 24 December 2019 (reported on the Class 46 blog here).

Protection of name right extended to class 25

This is another important win for Michael Jordan in China concerning the dispute over the trade mark right for the Chinese character trade mark “乔丹” (Qiaodan). This time, the SPC ruled in favour of Michael Jordan concerning the Chinese character trade mark “乔丹” (Qiaodan) in class 25.

The SPC found that "Jordan" has a high popularity in China and is familiar to the relevant public. The relevant public in China usually refers to “乔丹” (Qiaodan) as Michael Jordan, and there is a stable correspondence between “乔丹” (Qiaodan) and Michael Jordan, so he has the lawful right to the name. Before the application date of the disputed trade mark, Michael Jordan was widely known in China, and his fame was not limited to the field of basketball, as he had become a public figure with a high reputation.

According to Article 99 of the General Principles of Civil Law and Article 2 of the Tort Liability Law of the People's Republic of China, natural persons enjoy the right of name. If a trade mark is registered with the name of another person who has a prior name right, and it is likely to cause the relevant public to mistakenly believe that the goods or services marked with the trade mark have a specific connection with the natural person, such as endorsement, permission, etc, the registration of the trade mark shall be deemed to damage the prior name right of another person, in violation of the provisions of Article 31 of the 2001 China Trademark Law.

In this case, the trade mark in dispute is composed of the Chinese characters “乔丹” (Qiaodan) and a device. Qiaodan Sports had been fully aware of Michael Jordan, and his long-term and extensive popularity in China, and yet still applied for the registration of “乔丹” (Qiaodan) as a trade mark. This registration would easily cause the relevant public to mistakenly associate the goods marked with the disputed trade mark with Michael Jordan as there might be some link between them such as endorsement and permission, which would damage the prior name right of Michael Jordan. Therefore, the registration of the disputed trade mark violated Article 31 of the 2001 China Trademark Law.

Claim for portrait right denied

But the registration of the disputed trade mark does not damage the right of portrait claimed by Michael Jordan. According to the court, a “portrait” protected by the portrait right must be recognisable. In other words, it should contain enough personal characteristics to enable the public to identify the corresponding right subject (that is, the specific natural person) so as to be able to clearly refer to the corresponding right subject.

If the logo for the protection of portrait right is not recognisable and cannot clearly refer to a specific natural person, it is difficult to form the personal dignity or personal interests that should be protected according to law on the logo and belong to a specific natural person. The device (pictured left) in the disputed trade mark is only a silhouette figure, which does not contain any personal characteristics related to Michael Jordan except the overall contour of the body.

In addition, Michael Jordan has no other legal rights for the action as shown in the device, and other natural persons can make the same or similar actions. The device is not recognisable and cannot clearly refer to Michael Jordan, and therefore his claim for protection for the right of portrait in the present case is not established.

A very good precedent

As commented in our last report about the Jordan case, the verdicts of the SPC show the determination of the Chinese government to curb bad faith applications, creating a better and fairer legal environment for foreign investors. The Jordan case sets a very good precedent of protection of prior non-trade mark rights to fight against trade mark hijackers.

Ling Zhao is a trade mark attorney and attorney-at-law with CCPIT Patent and Trademark Law Offices in Beijing and a member of the MARQUES China Team