Jordan Sports May Lose "Jordan" Trademark after the Supreme People's Court of PRC Changed the Judgement

Borsam IP

Abstract: The trademark in dispute is “” in class 25 with registration No.6020578 registered by Qiaodan Sports. It contains an image - a basketball player in midair attempting a layup, and two Chinese characters “乔丹”. This trademark was requested invalidation by the famous basketball player Michael Jordan in 2012. But the invalidation failed in the China National Intellectual Property Administration (CNIPA) as well as in the administrative proceeding in 2014 and 2015, because the courts held that there is no sufficient evidence to establish an exclusive link between “乔丹” and “Jordan”. Then Michael Jordan requested the Supreme People's Court of PRC a re-trial. On 26 March 2020, it ruled in favor of Michael Jordan, and canceled the administrative judgments of first and second instance, and ordered CNIPA to remake a decision.

What are the main focuses of dispute in this case?
There are two main focuses of dispute. The first is whether the trademark in dispute infringed the earlier right of the portrait. The second is whether the trademark in dispute infringed the right of the name.
1.  Right of Portrait
Jordan’s lawyer compared the similarity between Michael Jordan’s classic photos and part of the trademark as follows.

However, the second picture shows a shadow, and there is no sufficient evidence that the public will recognize Michael Jordan. In the administrative judgments of the second instance, the judge stated that right of portrait is personality right that a natural person enjoys based on his or her portrait, which should reflect the main appearance features of that person. It should be so clear that the public can generally recognize the portrait as that person at least, while the evidence provided was unable to support this point. The Supreme People's Court of PRC supplemented that, any individual can act like the picture showed, i.e., jumping in midair attempting a layup, so this action has no identifiability. Therefore, the lawyer’s claim was not supported by the High People’s Court.

2. Right of Name
The Intermediate People's Court held that “乔丹” has a connection with Michael Jordan, but the goods designated by the trademark in class 25 are not in the similar industry which Michael Jordan was in. However, the Supreme People's Court stated that the Chinese characters “乔丹” has a connection with Michael Jordan as follows.
From 26 June 1984 to 22 May 2010, there are 282 articles about Michael Jordan published by People's Daily and the Economic Daily. Most of them used “乔丹” as his Chinese name.
1) In October 2015, Michael Jordan attended relevant business events, and the medium like Tencent, China News TV, NetEase used “乔丹” as his Chinese name.
2) From 1984 to 2011, there are 26 kinds of books and special journals about Michael Jordan issued in China and 14 of them used “乔丹” as his Chinese name.
3) There is a certified survey report conducting in Beijing, Shanghai, Guangzhou, Chengdu and Changshu, with the subject “the association between Michael Jordan and Qiaodan Sports” in 2012. It showed that most people think that Michael Jordan has a connection with Qiaodan Sports.
4) Qiaodan Sports stated that
A.“乔丹” has a connection with Michael Jordan but not exclusive association;
B.“乔丹” got reputation by the use of Qiaodan Sports and Michael Jordan;
C. Qiaodan Sports registered the trademark in dispute after knowing Michael Jordan’s reputation;
D. There is a possibility that it reminds people of Michael Jordan when buying Qiaodan Sports’ products;
E. Qiaodan Sports has different explanations when explained the trademark’s meaning.
5) Qiaodan Sports stated that customers might be misled by Qiaodan Sports and the trademark "乔丹", which are associated with the products with Michael Jordan.
6) Qiaodan Sports and its controlling shareholders had registered some trademarks that are related to Michael Jordan, such as Michael Jordan’s children’s name Jeffrey Jordan and Marcus Jordan as well as their Pinyins.
Finally, the Supreme People's Court announced that “乔丹” has stable correspondence with Michael Jordan and canceled the decision of CNIPA and the administrative judgments of the first and second instance according to Article 31 of Trademark Law.
What are the influences of this case?
 In the first place, Chinese consumers now come to realize that Qiaodan Sports has nothing to do with Michael Jordan.
Another significant aspect is the important impact on unifying the adjudication standards concerning the prior name rights in trademark administrative disputes, which make great importance for local courts at all levels.
On the other hand, it is of great significance in upgrading legal awareness and protecting intellectual property rights in China. It declares that China will not tolerate any forms of trademark squatters. Also, this case strongly advises the trademark right holders to file their trademarks as early as possible in China, which is often the best strategy for global branding.