China's Supreme Court Ruled On Jordan Trademark Dispute
On December 8, 2016, China’s Supreme Court (“the Supreme Court” hereinafter) ruled on the dispute between the retrial petitioner (the plaintiff in the first instance, the appellant in the second instance), Michael Jeffery Jordan (“Jordan” hereinafter), and the respondent (the defendant in the first instance, the appellee in the second instance), China Trademark Review and Adjudication Board (“the Board” hereinafter), regarding the validity of the ten trademarks of the third party Qiaodan Sports, Co. (“Qiaodan Sports” hereinafter).
Qiaodan Sports is a sporting goods maker based in Fujian Province of China. Since 2002, Qiaodan Sports has registered a series of trademarks relating to “乔丹” (Jordan) and “QIAODAN,”[1] which have been widely used in their merchandise and advertisements. Jordan is a former basketball star in the National Basketball Association (NBA) and has prestigious renown in China.
The focus of this case is whether a U.S. citizen, Jordan, enjoys the right to use the Chinese transliteration for his surname, “Jordan.” The Supreme Court held that Jordan has the right to use the Chinese characters “乔丹” for his surname, and reversed the decisions of three cases made by the Beijing High Court pertaining to “乔丹” trademarks. However, the Supreme Court also held that Jordan has no rights over the pinyin versions of his surname, i.e., “QIAODAN” and “qiaodan;” therefore, the Beijing High Court’s decisions regarding the other seven cases pertaining to “qiaodan” and “QIAODAN” trademarks were upheld by the Supreme Court.
There are two key points in these cases: (1) what is the legal basis for Jordan’s claim that these trademarks are invalid due to infringement of his right to use of the name; and (2) does the Chinese transliteration for the U.S. family name Jordan constitute the subject matter of the right to use of the name? Regarding point (1), Article 31 of the Trademark Law (2001) recites: “no trademark application shall infringe another party’s prior existing rights” but does not refer to any specific type of prior existing rights. The Supreme Court held that since the Trademark Law does not specify, any rights protected under other laws, such as the General Principles of Civil Law, the Torts Liability Law etc., could constitute prior existing rights. Article 99.1 of the General Principles of Civil Law recites: “citizens shall enjoy the right of a name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited.” Accordingly, the right to use of a name constitutes the prior existing right under Article 31 of the Trademark Law.
Regarding point (2), in determining whether Jordan enjoys the right to use of “Jordan,” the Supreme Court held that a family name alone is commonly used in China to refer to a foreigner and thus rejected Qiaodan Sports’ assertion that a mere family name does not constitute subject matter for protection of use of a name. While determining whether Article 31 of the Trademark Law (2001) is applicable regarding the Chinese transliteration for “Jordan,” i.e., “乔丹,” the Supreme Court indicated that the following three criteria have to be met:
- The specific name has a reputation and should be well-known to the relevant public;
- The relevant public uses this specific name to refer to the natural person; and
- There is a stable correspondence between the specific name and the natural person.
With the various reports submitted by Jordan, it is clear that Chinese media usually use “乔丹” to refer specifically to Michael Jeffery Jordan. In two surveys provided by Jordan, 85% and 63.8% of the interviewees acknowledged that when “乔丹” is mentioned, the first thought would connect to Jordan himself, not Qiaodan Sports, which demonstrates stable correspondence between Jordan personally and “乔丹.” Moreover, even the prospectus of Qiaodan Sports also indicated and indirectly acknowledged the relationship between Jordan and “乔丹.” Therefore, the Supreme Court held that Jordan has the right to use the Chinese character transliteration for Jordan and requested that the Board to reconsider the validity of the related trademark decisions.
It is worth noting that although Jordan won three cases in the Supreme Court proceeding, more than 50 retrial petitions against other trademarks had been previously rejected. Particularly of note, the trademarks currently used by Qiaodan Sports are all maintained. According to Articles 31 and 41 of the Trademark Law (2001) (Articles 32 and 45 of the new Trademark Law), because the trademarks used by Qiaodan Sports were all registered before 2007, the five-year statute of limitation to challenge the validity of a trademark had passed by the time Jordan filed the invalidation request claiming infringement of his right to use of a name in 2012.
The Supreme Court’s ruling affirmed that the right to use of a name of a person is a prior existing right under the Trademark Law and an application for a trademark registration shall not infringe another individual’s right to use of a name. Because China is a civil law country, the Supreme Court’s decision will not be binding case law. Nevertheless, as the Supreme Court sits the highest in judicial authority, its decision will provide a substantial reference for other lower courts when reviewing similar cases. It is believed that the courts will not only consider whether the infringed party has the right to use of a name against a trademark but also whether the specific name attached to the trademark establishes a stable correspondence with the infringed individual and whether the name is well-known to the relevant public.
It should be re-stated that filing an invalidation request based on an alleged infringement of the right to use of a name is subjected to a five-year statutory period under the Trademark Law. Therefore, the infringed individual should take legal action and enforce their right within five years after the registration of the trademark to be challenged. Additionally, it is always important to register a trademark early in China; not only for the mark in the home country language version and in the Chinese characters transliteration version, but also for the pinyin version already be adopted or expected to be adopted by the Chinese consumers. In this case, even a name and trademark that is as famous as “Jordan” for sports related products would not be protected against registration and use of the pinyin versions (standardized spelled sounds versions) of his name/mark.
Sometimes the pinyin version may already be known to the consumers in China or may be expected to become known to and adopted by the Chinese consumers. Companies should work with trademark counsel, with translators, and with marketing consultants as the situation indicates to determine what transliterations and what pinyin name/mark the Chinese consumers have already adopted or they can easily say or connect to the name/mark in the home country language. The select names/marks that should be registered and consistently used in China to establish rights and to generate consumer recognition in the names/marks as registered.
[1] 乔丹 is the Chinese transliteration for Jordan, and QIAODAN is the pinyin of “乔丹.”
