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Friday, 7 August 2015

No Air for Jordan: Michael Jordan Loses Fight over Marks in China

This Kat grew up playing and loving the sport of basketball, cultivating a deep admiration of the great Michael Jordan; a man nearly synonymous with basketball and the National Basketball Association (NBA). With his immense notoriety not even his Airness (as those of a basketball disposition would call him) is infallible, be it in sports or in trade marks. Recently this Kat became aware of an interesting dispute that has been played out in China regarding Mr Jordan and a variety of trade marks associated with him.

The dispute began in 2012 when Michael Jordan took the sports brand Qiaodan Sports to court, alleging the misuse of his name and several other marks, such as the number 23 (used by him during his tenure in the NBA) and the Jumpman logo (derived from a photoshoot with Nike, incorporating Mr Jordan's often unique and flamboyant dunk poses) that is associated with his own Air Jordan brand. At first instance his claim was denied, and Mr Jordan subsequently appealed that decision to the High People's Court.

The iconic Jumpman dunk logo
What makes the case peculiar is the name of the company itself, which is roughly pronounced as "chee-ow dahn"; a transliteration of Jordan's name in China, and has become associated with the star since his introduction to the Chinese market in the 1980s. In addition to the name Qiaodan the company also uses several marks that are very similar to the Jumpman logo, featuring a silhouette of a man dribbling a basketball with his left hand and one variety that replicates the Jumpman logo almost identically.

In the court action  Jordan sought to revoke several of Qiaodan Sports' registered marks, specifically pertaining to his transliterated name, the Jumpman logo and the number 23 (and, surprisingly, his sons' names). A number of Qiaodan Sports' marks were, at least arguably, blatantly copied off Jordan's trade marks in the US, featuring near identical styles, compositions and the use of several of the above features.

The Beijing Municipal High People's Court upheld the earlier decision (the current decision is available in Chinese here) to reject Jordan's argument, and allowed Qiaodan Sports to retain their marks. In the court's judgment the name 'Jordan' "is not the only possible reference for 'Qiaodan' in the trade mark under dispute" and that it is "a common surname used by Americans", indicating that the name was not distinctive even through its association with a famous athlete. Further, in comparing the marks featuring the Jumpman logo, or a style similar to it, the court saw that as the character in the logos had no discernible facial features it would be hard for the Chinese people to recognize it as Mr Jordan.

Merpel vowed to not be
outdone by Michael Jordan
Under the Chinese General Principles of Civil Law, specifically Articles 99 and 101, an individual does have the right to their personal name and the right to enjoy their reputation. It would seem that Michael Jordan, although very famous in the Western world, does not, in the court's view, enjoy a strong presence or uniqueness in China, disallowing his claim under these provisions. This Kat will wholly admit his lack of nuanced knowledge in this area and the specifics of the above case, inviting any readers willing to educate him more on these provisions in the comments.

Nevertheless, this case only serves to highlight the importance of trade mark registration in China, and the possible effective provenance of any reputation therein. Western companies and famous individuals should be conscious of this fact, and ignorance is by no means a defence, irrespective of your fame and fortune elsewhere. Michael Jordan's lawyers have indicated that they will appeal the decision to the Supreme People Court, but this Kat is sceptical of his possible success even at the highest level.

5 comments:

cebo said...

I am not familiar with the specifics of the case but it seems quite a biased decision ¿?

If you get a copy of the translation in english, please let me know ;), anything related to his airness is of interest to me, even more if it also deals with IP!

Nice post, keep it up

Jani said...

There is no official translation that I was able to find (and it doesn't seem to be common practice to translate decisions in China), but if one emerges I will happily update the post.

Anonymous said...

The decision of the Beijing courts (Intermediate and Higher) were actually rather reasonable and coherent, and not (or at least not clearly) biased. The facts of the case are very important here. Jordan entered the Chinese market in the 90s and only registered his "English" name as a trademark. The Chinese however (practically) never refer to a brand or person by its western name, instead they use -or create- a Chinese version. For Jordan, the Chinese public created "Qiaodan". Jordan didn't register this name, while a Chinese company did (first to file rule, sorry). After this company used the name in the course of trade for ages, Jordan finally decided to file an invalidity procedure. Given the first to file rule, Jordan had to rely on his name rights (he didnt have a registered or unregistered trademark to oppose it with). However, the Court decided that Jordan cant successfully rely on his name right since Qiaodan is but one of the hundreds of possible transliterations for Jordan in Chinese, and moreover doesnt refer to Michael Jordan, but to Jordan in general, which is a very common English name. there is therefore no sufficient link between Qiaodan and Jordan to invalidate the trademark on the basis of Jordan's name right. More to the contrary, the Chinese company had been using the name for so long, that the Chinese consumers clearly made a link with that company, instead of with Jordan. Seems quite fair to me. There are other cases in China where other NBA players actually succeeded in the very same type of procedure. A very clear and nuanced article on this issue (including other NBA cases) is https://bol.bna.com/no-trademark-slam-dunk-for-michael-jordan-in-china/.

Jani said...

Anonoymous,

Thank you very much for the clarification, and had I been able to read the case in its entirety I would have been able to give a better picture of how things went. Mr Jordan's lateness reflects on the current climate for a lot of individuals and/or companies, where, seemingly at least, China isn't a filing priority, leading to issues such as this.

Again, I do appreciate your input here, as it adds much needed colour to this discussion.

Anonymous said...

I think the real issue in this case was that Michael Jordan took to long to take action against Qiaodan Sports.

Michael Jordan only took action against Qiaodan Sports in 2012, and the trademark was registered in 2008.

Prior to filing a request for the invalidation of Qiaodan Sports mark, Qiaodan was able to evidence the following:

- Promotional expenditures of approximately RMB 70,000,000 in 2010.
- According to audit report, the business incomes of Qiaodan Co. were RMB 518,480,000; RMB 780,930,000; RMB 2,860,990,000; and RMB1,710,660,000 in 2008, 2009, 2010, and 2011 (till June 30) respectively.
- Net profits of RMB 52,710,000; RMB 929,40,000; RMB 510,470,000; RMB 96,690,000 in 2008, 2009, 2010, and 2011 (till June 30) respectively.
- Qiaodan Sports provided the addresses for approximately 5700 branded stores across China.


The evidence submitted by Qiaodan weighed heavily against Michael Jordan's case.

While there was obvious an attempt to trade on the goodwill of Michael Jordan by Qiaodan Sports and decision was unfair to Michael Jordan, Michael Jordan did not help his case by taking a wait-and-see approach to this matter.

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