by Tequila Higgins
Since 2012, ex-NBA legend, Michael Jordan, has battling a company in China for using his name, jersey number, silhouette, etc on their products. Quiaodan Sports was established in 2000 and has a “registered series of trademarks related to Michael Jordan including “乔丹” (the Chinese name of Michael Jordan), “Qiaodan” (the pinyin transliteration of “乔丹”) and a logo resembling the silhouette of Michael Jordan. Qiaodan Sports has even registered “杰弗里乔丹” and “马库斯乔丹”, which are the transliteration of the Chinese names of Michael Jordan’s sons” (ELLALAN). So in 2012, Jordan started to take action again Qiaodan Sports for the “unauthorized registrations” of these forementioned things, including a commencement of around 70 trademark invalidation actions against the trademark registrations of Qiaodan Sports.
China has adopted a “first-to-file principle) in its trademark registration system. With that in place, Jordan almost lost all the invalidation cases as he had not had any prior applications or registrations for any marks identical or similar to disputed marks. The basis of the Michael Jordan’s arguments were that the marks were to similar and could be misleading to the consumers that the two companies were associated. “he Trademark Review and Adjudication Board, the Beijing No. 1 Intermediate People’s Court and the Beijing High Court all came to the view that “Jordan” was a common surname which was not readily and uniquely associated with Michael Jordan.”
“Finally, in 2016, the Supreme People’s Court (“SPC”) made a ruling in favor of Michael Jordan in an appeal he filed with SPC. SPC accepted that “乔丹” was well-recognized in China and that there was an established link between “乔丹” and Michael Jordan. SPC therefore ruled that Michael Jordan enjoyed the rights of name over “JORDAN” in Chinese characters i.e. “乔丹” and SPC ordered Qiaodan Sports’ registration for the trademark “乔丹” to be invalidated. Unfortunately, Michael Jordan’s claims for protection on “QIAODAN” was rejected as SPC ruled that they could not find an established link between Michael Jordan and “Qiaodan” as this pinyin transliteration did not solely correspond to the Chinese characters “乔丹”.”
Fast forward to March 2020, Jordan filed another invalidation action involving the trademark under trademark registration no. 6020578 in class 25 which he lost in all the lower courts in this invalidation and appealed to the Supreme People’s Court and they ended up making a ruling that the class 25 registration should be invalidated. The SPC also ruled in favor of Michael Jordan, that Qiaodan Sports was aware of the widespread reputation of Jordan’s name and the the rights under their symbol for his, which in turn would create confusion amongst consumers and that the registration of the disputed trademarks were endorsed or licensed by Jordan, therby damaging the prior name right of Michael Jordan. Qiaodan’s registration was in breach of Article 31 Trademark Law and should be invalidated, as they are a violation of Michael Jordan’s rights. In regards to the pictures/silhouette, in order to be protected by portrait rights, the portraits in use have to be recognizable and contain enough persona characteristics for the public to identify the corresponding subject, and since it didn’t it did not infringe the portrait rights of Jordan.