Since 2014, the Michael Jordan case attracted a great deal of attention in the Chinese IP field.
Chinese sportswear company Qiaodan Sports LLC (hereinafter refer
to "Qiaodan") registered the trademark '
' (Reg. No. 6020578) for "clothing;
shoes; hats, etc" in Class 25 in 2010. US sports personality
Michael Jordan filed an invalidation action against this trademark
claiming that this mark infringed his name right and portrait
right. The defendant countered that: 1) Jordan's full name is
Michael Jeffrey Jordan; therefore, he could claim rights neither in
the 'Jordan' part alone nor in its Chinese transliteration;
and 2) the figure in the mark was displayed in silhouette only,
with no specific facial characteristics, thus, it would be unlikely
for the relevant public to recognise the figure as that of Michael
Jordan. Supreme Court finally ruled in favour of Michael Jordan,
supporting his name right claim based on the Chinese
transliteration of part of his name.
Below are Chinese transliterations for each part of Michael Jordan's name.
These make it clear that the word part in the disputed mark is identical to the Chinese transliteration of 'Jordan'. The key issue was whether Michael Jordan enjoys portrait right over the image in the trademark and the name rights over the Chinese part in this trademark.
- Case Background
On October 31, 2012, Michael Jordan filed trademark invalidation action (previously called "trademark dispute" before amendment of China Trademark Law in 2013) based on his prior right of personal name and portrait;
On April 14, 2014, CNIPA (previously known as "Trademark Review and Adjudication Board" before the reform of government organization) made the decision, and decided to maintain the registration of the disputed mark;
Michael Jordan appealed CNIPA's decision to Beijing No. 1 Intermediate Court, but the Court maintained the registration of the disputed mark;
Then Michael Jordan appealed to Beijing High Court against the first instance judgement; on June 18, 2015, Beijing High Court made a judgement that the appeal was rejected and the first instance judgement was upheld.
The main reasons in CNIPA's and Court's decisions are: 1) 'Jordan' is an American common surname rather than a name. The evidence is insufficient to prove that '乔丹' contained in the disputed mark definitely points to "Michael Jordan". Thus, Michael Jordan's claim that the disputed mark infringes his right to name is not supported; and 2) the portrait should clearly reflect the main features of the person, at least to the extent that the public can generally recognize the portrait as an image of the rights holder. In this case, the body image in the figure part of the disputed trademark is designed as a shadow, which fails to clearly reflect the features of the figure, and it is difficult for the relevant public to identify the image in the disputed trademark as that of Michael Jordan. Thus, Michael Jordan's claim that the disputed mark infringes his right to portrait is not supported, either.
- Decision ruled by the Supreme Court
In this case, the Supreme Court confirmed that, according to the evidence submitted by Michael Jordan (such as published newspapers, periodicals, websites, books and special journals from 1984 to 2012, before the registration of the disputed mark), '乔丹' was the most common name for Michael Jordan in the Chinese media. The first and second instance judgement was made not in accordance with the facts and should be corrected.
Michael Jordan's attorney also submitted two pieces of investigation reports. The investigation process was notarized by the Notary office. The investigation report indicates that when asked the name '乔丹', a large percentage of interviewees replied they thought of Michael Jordan, and they mistakenly believed there is a link between Michael Jordan and Qiaodan company. The Court expressed in the decision that the investigation procedure is relatively standard, the authenticity and proof of the investigation conclusion is relatively high, and the relevant facts can be jointly proved with other evidence in the case.
Regarding the name rights, the Supreme Court held that:
1) it was demonstrated that '乔丹' has been widely known for many years as a designation for Michael Jordan among the relevant Chinese public. Thus, the Supreme Court concluded that Michael Jordan enjoys name rights over the Chinese transliteration of 'Jordan'.
2) Before the application date of the disputed mark in this case, Michael Jordan has been relatively well-known in China, and his well-known scope is not limited to the field of basketball, and he has become a relatively well-known public figure;
3) Qiaodan, knowing that Michael Jordan has a long-term and extensive popularity in China, still applied for the registration of the disputed trademark with '乔丹', which is easy to lead to the relevant public to mistakenly think that the products marked with the disputed mark have a specific relationship with Michael Jordan, such as endorsement, license and so on. Thus, registration of the disputed mark infringes Michael Jordan's right of prior name.
Regarding the right of portrait, the Supreme Court held the same attitude with the Beijing No. 1 Intermediate Court and Beijing High Court. They summarized that the "portraiture" should be identifiable, which should include the personal characteristics of the specific natural person. The body image in the disputed mark is only a black silhouette of a human figure, which does not contain any personal characteristics related to Michael Jordan except the outline of the body. In addition, Michael Jordan does not enjoy other legal rights in respect of the action appeared in the disputed mark, and other nature persons can also make the same or similar action. The image in the disputed mark is not identifiable and cannot clearly refer to Michael Jordan. Thus, the claim that the registration of the disputed mark damages the right of portrait cannot be established.
- Attorney's Comments
According to Article 32 of China Trademark Law, an application to register a trademark must not prejudice the prior rights of another person or be used unfairly to pre-emptively register another person's trademark which had prior use and certain reputation. This prior right covers personal names, images and trade names, as well as copyright and design patents – although certain factors must be met in order for it to apply.
CNIPA will not investigate whether a trademark infringes a personal name right during examination, unless the mark contains the name of a living political figure – although applications for such marks may be rejected outright on the grounds that they might have an unhealthy influence on society, under Article 10.1(8) of the Trademark Law. Any interested person can file an opposition against a preliminarily published trademark or initiate an invalidation action against a registered mark if he or she believes that it infringes his or her name or right.
Name rights cover given names, pen names, stage names and nicknames. Only a natural living person can claim a personal name right under Article 32. In such cases the disputed trademark should be identical to his or her name, or be a well-established translation of his or her name.
The name rights set out in the Trademark Law are designed to protect not only human dignity, but also the economic interests of a natural person who enjoys a certain reputation in mainland China. The law recognises that the use and registration of a mark which is similar or identical to a person's name could mislead consumers into believing that there is a direct relationship between that person and the trademark (eg, endorsement or license). Thus, the subject's reputation and public awareness of him or her will be a crucial factor when it comes to determining whether a trademark infringes another's name right. In other words, it is difficult to protect the name of an ordinary member of the public under the Trademark Law.
The different cases indicated that even if the specific name is not the full name of a natural person or there is no established unique relationship with this natural person, the name shall still be protected under the Trademark Law if there is an established relationship between the name and the person. Further, the relevant public in China is often accustomed to referring to foreigners by the Chinese translation or transliteration of their surname, rather than their full name – on occasion, many people might in fact be unaware of the full name. This practice should thus be taken into consideration when deciding whether a foreigner enjoys name rights over the translation or transliteration of part of his or her name. In the subject case, while 'Jordan' is indeed a general surname in the United States, when used in relation to sports and basketball in particular (which are the goods designated by the disputed mark), it suggests a direct link with Michael Jordan. Thus, the Supreme Court finally concluded that Michael Jordan enjoys name rights over the Chinese transliteration of 'Jordan', that is, '乔丹'.
The other important point in this case is that Michael Jordan's attorney collected strong evidence showing a stable link between '乔丹' and 'Michael Jordan', as well the high reputation of Michael Jordan amongst Chinese consumers. The most helpful pieces of evidence are the articles related to Michael Jordan published in some newspapers, periodicals and websites, books and special journals, and the notarized investigation reports. The former can be collected through conducting National Library Search. National Library could undertake to search all published resources in mainland China such as newspapers and magazines via traditional media, and will issue an official report with their seal. The probative value of such evidence is relatively high to show the reputation of an object in China. Conducting investigation/questionnaire survey is also another method to show the actual confusion/misunderstanding caused amongst the relevant public, but this method carries a high cost.
One suggestion from this case is that the interested party should take timely measures against the concerned marks to promptly safeguard their legitimate rights and interests. In the subject case, though some of Qiaodan's marks concerning '乔丹' have been invalidated through actions raised by Michael Jordan, Qiaodan still registered relevant marks as early as 1991 in different classes, against which the time limit for filing invalidation actions has expired. Also, there is no doubt that Qiaodan kept using the trademarks relating to '乔丹' for many years and also obtained certain reputation in mainland China; so when examining the relevant cases, the Office will still consider their use situation in order to ensure fairness to both parties. Thus it is difficult for Michael Jordan to invalidate all relevant marks and take action to completely prevent the counterparty from using its registered trademark '乔丹'.
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Originally published 15 June, 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
