The Supreme People's Court of China's Michael Jordan Trademark Decision

This guest post is provided by Henry Liao, managing partner at Schinders Law Firm in Guangzhou, China and Mike Mireles, former GuestKat. 

On December 7, 2016, the Supreme People’s Court of China (China’s highest court) invalidated a trademark registered in China by Qiaodan Sports using the Chinese translation of famous basketball player Michael Jordan’s surname “Jordan”, which is “乔丹” in Chinese.  This very famous legal battle between Michael Jordan and Qiaodan Sports has lasted for over four years and has resulted in a very interesting decision.  A decision that sends a message in and outside China that trademark rights should be respected in China.

Who is Michael Jordan?

 In China in 2007, Qiaodon Sports, a Chinese sport shoes manufacturer, applied for and registered “乔丹” in Class 28 for “sport equipment, swimming pool, roller skates, [and] Christmas tree decoration” (the “Trademark”).  The Supreme People’s Court framed the issue as whether the Trademark infringed Michael Jordan’s personality rights, or more specifically, encroached on the economic value of Michael Jordan’s name.  The Supreme People’s Court answered “yes” to the issue and supported its analysis with two interesting theories: the threshold of name-personality right protection and the fruit of poisonous tree doctrine in trademark law.

-          Threshold of Name-Personality Right Protection

Article 31 of the PRC Trademark Law offers protection for “prior rights” against a later trademark application.  The Supreme People’s Court deems any civil rights or interests enjoyed and accrued in accordance with the PRC General Rule of Civil Law, the PRC Tort Law and other laws before the trademark application shall fall under such “prior rights” of Article 31.  Accordingly, name-personality rights, which is vested by Article 99 of the PRC General Rule of Civil Law, shall override the later application for a trademark which may impair the prior interest of a name-personality.

The Supreme People’s Court further states that not just any name can enjoy Article 31 protection, and that the following conditions must be met:

First, such name shall have a considerable extent of popularity among the relevant public, and it shall refer to a natural person.  Notably, the name does not necessarily mean the full name on your passport.  It can be your pseudonym, stage name or even a code name.

Second, the name shall have been consistently used by the relevant public to refer to that person.  The name does not have to exclusively belong to the person, which is nearly impossible, nevertheless consistency in such use requires a considerable length of time and a majority proportion of users among the relevant public. 

Evidence admitted in the case since 1984 demonstrated that the Chinese media had been using “乔丹” to refer to the legendary Michael Jordan.  A large volume of news reports, TV programs, and books were offered as evidence.  Moreover, the applicant of the Trademark admitted that the relevant public in China did use “乔丹” to name Michael Jordan.  The Supreme People’s Court ruled that “乔丹”, the surname of Michael Jordan, through many years of use, had become the customary appellation of the high-profile Michael Jordan, and therefore falls under Article 31 protection.

-          Fruit of Poisonous Tree Doctrine in Trademark Law

The applicant, Qiaodan Sports, is a manufacturer of sport shoes established in the year of 2000.  Admitted evidence demonstrated that its business revenues for 2008-2011 were: RMB 518.48 million, 780.93 million, 2,860.99 million and 96.69 million, respectively.  The Supreme People’s Court in 2002 found that the applicant’s shoes were a well-known commodity, and its shoe box design was special packaging of a well-known commodity.  In June 2005, another trademark of the applicant’s (see left),

One of Qiaodan Sports' Marks

which is arguably similar to Nike’s (see below), was admitted as a well-known trademark in sport shoes and apparel business by the PRC Trademark Office.  Moreover, the applicant spent a lot of money in product promotion, sponsoring sports games, and contributing to the public welfare.

Notably, the Supreme People’s Court found that the applicant had built up high public awareness and reputation for the Trademark “乔丹” through many years of operation, promotion and usage and that the relevant public may be aware that the Trademark “乔丹” belongs to the applicant.  However, the Supreme People’s Court still determined that the relevant public may be misled into believing that there was a certain relationship between the applicant and Michael Jordan.

One of Nike's Marks

The Supreme People’s Court further found that the applicant knowingly registered the Trademark with the intent to obtain a free ride, at the cost of encroaching on Michael Jordan’s interest, which obviously violated the bona fide principle.  The business success was not completely built up through honest operation, and undeniably contributed to the relevant public’s misunderstanding.  Therefore, The Supreme People’s Court held that the commercial success of the Trademark “乔丹” cannot and shall not justify the applicant’s infringement on Michael Jordan’s name-personality right. 

The importance of this decision is hard to understate.  It sends a clear message that intellectual property rights will be enforced in China—even with substantial reliance interests by a Chinese company.