SPC issues split ruling on trade mark disputes involving Michael Jordan | Practical Law

SPC issues split ruling on trade mark disputes involving Michael Jordan | Practical Law

The SPC has ruled in favour of Michael Jordan in relation to trade marks registered by QIAODAN Sports Co., Ltd. that use the common transliteration of the surname Jordan (乔丹) in Chinese characters. The court upheld other trade marks that use QIAODAN, the Pinyin or Chinese phonetic Romanisation of these characters.

SPC issues split ruling on trade mark disputes involving Michael Jordan

Practical Law UK Legal Update w-004-9957 (Approx. 3 pages)

SPC issues split ruling on trade mark disputes involving Michael Jordan

by Practical Law China
Published on 14 Dec 2016 • China
The SPC has ruled in favour of Michael Jordan in relation to trade marks registered by QIAODAN Sports Co., Ltd. that use the common transliteration of the surname Jordan (乔丹) in Chinese characters. The court upheld other trade marks that use QIAODAN, the Pinyin or Chinese phonetic Romanisation of these characters.
On 8 December 2016, the Supreme People's Court (SPC) publicly announced its decisions on 10 administrative cases involving disputes between US basketball star Michael Jordan and the Trademark Review and Adjudication Board (TRAB) over trade marks registered in China by QIAODAN Sports Co., Ltd. (QIAODAN Sports).
QIAODAN Sports began using the common transliteration of the surname Jordan (乔丹) to build its brand in 2000. Michael Jordan sued in 2012, arguing that QIAODAN Sports had infringed his name rights. The TRAB and lower appeals courts did not recognise a corresponding relationship between the common family name and Michael Jordan, and Jordan appealed.
Three of the ten cases involved trade marks with the Chinese characters "乔丹", four cases involved marks with "QIAODAN" (that is, the Pinyin, or Chinese phonetic Romanisation of the characters "乔丹"), and three cases involved marks with "QIAODAN" together with a silhouette graphic image of a basketball player.
The SPC held that there was an established link in the Chinese public between Michael Jordan and the characters "乔丹" and that the marks with these characters infringed on Jordan’s pre-existing right of name in violation of Article 31 of the then effective Trademark Law of the People’s Republic of China 2001 (中华人民共和国商标法) (2001 Trademark Law) (that corresponds to Article 32 of the current version of the law).
The SPC ruled against Jordan on the other seven cases because:
  • Jordan does not have a pre-existing right of name over "QIAODAN" in Pinyin and therefore the marks using "QIAODAN" do not violate Article 31 of the 2001 Trademark Law.
  • The marks do not violate other provisions of the 2001 Trademark Law by "endangering socialist morals or causing other negative influences" (Articles 10(1) and (8)) or "obtaining registration by deceptive or other improper means" (Article 41).
The SPC overruled the lower court decisions on the marks with the Chinese characters and ordered the TRAB to de-register those marks and to carry out a re-determination. The SPC also upheld the lower court verdicts and dismissed applications for retrial in the cases involving the marks with "QIAODAN".
The verdict, which was broadcast live, is important because it provides guidance for the TRAB and China's lower courts on the lines of trade mark protection for personal names and may be used in future against so-called trade mark squatters.
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