Jordan Trademark Case: Issue

Jordan Trademark Case
FACT:
Michael Jordan（P），a famous basketball star in America，was reported by Chinese media as “乔
丹” mostly（Jordan’s name as represented by Chinese characters）from 1984 to 2012. Qiaodan
Sports(D), a famous Chinese sportswear company, has registered “乔丹”as the trademark by 2003，
and this Chinese characters trademark in 2009 was identified as "well-known trademarks". This
company also registered Qiaodan （pinyin, or Romanized version, of Chinese characters）as
products’ trademark. Michael Jordan sued to Chinese court, alleging that Qiaodan Sports’ “乔丹”
series trademark infringed its name rights.
ISSUE：
Whether the registration of the trademark damages the name right of Michael Jordan and violates
“the application of trademark registration shall not harm others' existing rights” in Article 31 of
Trademark Law.
RULE:
1.Article 31 of the China Trademarks Law 2001：No trademark application shall infringe upon
another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a
mark that is already in use by another party and enjoys substantial influence.
2.Article 99 of General Principles of The Civil Law： Citizens shall enjoy the right of personal
name and shall be entitled to determine, use or change their personal names in accordance with
relevant provisions. Interference with, usurpation of and false representation of personal names
shall be prohibited.
3. Article 2, paragraph 2 of the Law on Tort Liability： “Civil rights and interests” used in this Law
shall include the right to life, the right to health, the right to name……
APPLICATION：
According to General Principles of The Civil Law and Tort Liability Law，the SPC officially
recognized name rights as a type of prior right under the Article 31 of the China Trademarks Law
2001. The test for recognizing name rights as prior rights is threefold: (1) the particular name should
have obtained a certain reputation in the PRC and be known to the relevant public; (2) the particular
name should refer to an individual; and (3) there should be a stable, corresponding relationship
between the particular name and the individual. Justice in the Jordan decisions held that the Chinese
character name "乔丹” fulfilled the test by the evidences of two investigation reports and survey
data. However，for non-Chinese speakers, it should be noted that the Chinese language is not a
reversible transliteration system and the Pinyin alone can refer to multiple Chinese characters.
Therefore, the SPC held that the mark QIAODAN in Pinyin failed the “stable corresponding
relationship” test and that Michael Jordan was not entitled to claim name rights to the QIAODAN
mark.
The SPC held that Qiaodan Company’s unauthorized registration of the“乔丹”trademarks was
likely to mislead relevant consumers to think that the goods or services bearing the trademarks were
authorized or licensed by Michael Jordan. In view of Michael Jordan’s high reputation in the field
of basketball sports, the Chinese relevant public has associated“乔丹”with Michael Jordan. His
reputation made him a famous public figure prior to the filing date of the trademarks and through
2015.
Furthermore, the court held that“迈克尔•乔丹” (Michael Jordan in Chinese) or “乔丹” had
become Mr. Jordan’s designation, and inactive use by Nike or Michael Jordan could not result in
Mr. Jordan’s loss of the right to the mark “乔丹”. The decision said that, within the scope of
goods of the trademarks, the mark was likely to cause confusion among the relevant public. Qiaodan
Company was aware of Michael Jordan’s high reputation when filing to register “乔丹” and other
Michael Jordan‒related marks without any prior consultation or negotiation for license or
authorization and allowed any resulting harm to occur, thereby capitalizing upon the reputation or
consent of Michael Jordan for free. The court found that this violated the principles of honesty and
credit, and thus ruled that Qiaodan Company had filed the trademarks in bad faith.
The court added that Qiaodan Company’s state of business operations, its registered enterprise name,
advertising, use, awards and honors, or efforts to protect the mark“乔丹” did not help to establish
its legitimacy or right to register the marks. Mr. Jordan filed for cancellation within five years from
the date of registration, which complied with the procedural time limit under the Chinese Trademark
Law.
CONCLUSION:
The trademark “乔丹” infringed Michael Jordan's name rights which is considered as a prior right
shrined by the trademark law, while “QIAODAN” and “qiaodan” didn’t infringe Michael Jordan’s
name rights.

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Jordan Trademark Case

Michael Jordan（P），a famous basketball star in America，was reported by Chinese media as “乔

丹” mostly（Jordan’s name as represented by Chinese characters）from 1984 to 2012. Qiaodan

company also registered Qiaodan （pinyin, or Romanized version, of Chinese characters）as

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