China's Supreme Court Considers Michael Jordan's Chinese Branding Issues


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Earlier this month, China's Supreme Court looked at whether NBA star Michael Jordan had the right to invalidate a trademark registration for his name in Chinese characters and pinyin, filed by a third party without his consent.

On December 8, 2016, the Supreme People’s Court (“the Court”) publicly announced the judgments relating to 10 trademark administrative dispute cases among the Retrial Applicant, Michael Jeffrey Jordan, the Respondent SAIC Trademark Review and Adjudication Board (“TRAB”) and the Third Party in the first instance court Qiaodan Sports Holdings Co. (“Qiaodan Company”).

The 10 cases involved
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three “乔丹” trademarks, four “QIAODAN” trademarks which are the pinyin form of “乔丹”, and three “QIAODAN and design” trademarks. Upon trial, the Court supported the Retrial Applicant’s requests to cancel the “乔丹” trademarks, due to their violations of the Retrial Applicant’s prior name right entitled in “乔丹” in accordance with the Article 31 of the 2001 amended Trademark Law; but rejected the requests concerning the other seven “QIAODAN” related trademarks on the ground that the Retrial Applicant is not entitled to the pinyin form “QIAODAN”, “qiaodan”.

Below are summaries concerning the winning “乔丹” cases and the losing “QIAODAN” pinyin related cases, which summarized from (2016) Zui Gao Fa Xing Zai No. 27 judgment, and (2016) Zui Gao Fa Xing Zai No. 31 judgment:

Case Summaries

The “乔丹” case

On October 31, 2012, the Retrial Applicant applied a cancellation application to the TRAB, and requested to cancel the No. 6020569 “乔丹” trademark (“the Disputed Trademark”) of the Qiaodan Company. The Disputed Trademark was approved for goods in relation to “sport activity equipments; swimming pool (for entertainment); roller skates; Christmas tree decoration (excluding lights and candies)” in class 28, and was applied for registration on April 26, 2007. The term of the exclusive right thereof is from March 28, 2012 to March 27, 2022. However, such application was rejected by the TRAB, which decision was then maintained by the First and Second Instance Court subsequently.

The Retrial Applicant applied for retrial to this Court, due to dissatisfaction of Second Instance Judgment made by the Higher People's Court of Beijing on the grounds that: (1) The “prior right” in the Article 31 of the Trademark Law includes the name right. (2) The Retrial Applicant is entitled to the name right of “乔丹” and “QIAODAN”. (3) The Retrial Applicant has wide fame that is beyond the field of basketball. (4) Whether the Retrial Applicant had actively used “乔丹”, “QIAODAN” or not, should not affect the name right protection claimed in this case. (5) The Disputed Trademark is easily to cause the relevant public associate it with the Retrial Applicant, and consider there is certain association (e.g. endorsement, licensing etc.) between the goods marked by the Disputed Trademark and the Retrial Applicant. (6) The Qiaodan Company registered the Disputed Trademark in bad faith. (7) The “fame” of the Qiaodan Company has been established on the basis of confusion and misidentification of the relevant public, and resulted in the market competition status and economical interests that should not belong to it. (8) The Retrial Applicant has not been negligent to protect his name right. (9) The Second Instance Judgment missed the appealing ground concerning the Article 31 of the Trademark Law. (10) The Disputed Trademark has violated the Article 10.1.8 and Article 41.1 of the Trademark Law.

The Court summarized the disputed focus as following eight issues:

I. The legal basis for protecting the name right claimed by the Retrial Applicant;
II. The specific content of the protected name right claimed by the Retrial Applicant;
III. The degree and scope of the fame of the Retrial Applicant in China;
IV. The effect of, actively use of “乔丹” by the Retrial Applicant and Nike Inc. (if any), on the name right claimed by the Retrial Applicant in this case;
V. The possibility of the specific circumstance of the Disputed Trademark causing misidentification in the relevant public;
VI. The bad faith in the registration of the Disputed Trademark by the Qiaodan Company, if any;
VII. The effect of the circumstances of the Qiaodan Company on the case; and
VIII. The effect of, the Retrial Applicant’s negligence in claiming his name right (if any), on the case.

Upon reviewing relevant evidence, including but not limited to massive media reports concerning the Retrial Applicant in China, two market investigation reports and so on, the Court concluded that:

⋅ The prior right stated in the Article 31 of the Trademark Law includes the name right entitled by other prior to the application date of the disputed trademark.
⋅ The Retrial Applicant is entitled to the name right of the Disputed Trademark “乔丹”, since it has fulfilled three conditions which are:
a. The specific name (“乔丹”) has certain fame in China and is acknowledged by the relevant public;
b. The relevant public refer “乔丹” to the Retrial Applicant; and
c. The “乔丹” has established stable connection with the Retrial Applicant.
⋅ The Qiaodan Company knew the Retrial Applicant’s long-term and wide fame in China, and still used “乔丹” to apply for the Disputed Trademark, which would easily lead to the relevant public’s misidentification of certain association (e.g. endorsement, licensing etc.) existed between the goods marked by the Disputed Trademark and the Retrial Applicant, and damage to the prior name right of the Retrial Applicant.
⋅ The Qiaodan Company had obvious bad faith in the registration of the Disputed Trademark.
⋅ The circumstances of the Qiaodan Company, such as its operation, promotion, use, honor as well as granted protection of its trade name and relevant trademarks, were insufficient to justify the registration of the Disputed Trademark.
Accordingly, the Court decided that the registration of the Disputed Trademark violated the Article 31 of the Trademark Law, and should be cancelled in accordance with the Article 41.2 of the Trademark Law, and that the TRAB should re-issue a decision with respect to the Disputed Trademark.

The “QIAODAN” Case

On October 31, 2012, the Retrial Applicant applied a cancellation application to the TRAB, and requested to cancel the No. 6020575 “QIAODAN” trademark (“the Disputed Trademark”) of the Qiaodan Company. The Disputed Trademark was approved for goods in relation to “clothing; layettes [clothing]; swimming suits; shoes; climbing boots; hats; socks; gloves; ties; belts [clothing]; raincoats; dancing clothes; wedding dress; sleep masks; scarves; non-slipping soles” in class 25, and was applied for registration on April 26, 2007. The term of the exclusive right thereof is from March 14, 2010 to March 13, 2020. However, such application was rejected by the TRAB, which decision was then maintained by the First and Second Instance Court subsequently.

The Retrial Applicant applied for retrial to this Court, due to dissatisfaction of Second Instance Judgment made by the Higher People's Court of Beijing based on the same grounds mentioned in the “乔丹” case above.
Upon trial, the Court summarized the disputed focus as following three issues:

I. Whether the registration of the Disputed Trademark has damaged the Retrial Applicant’s name right in “QIAODAN”, and therefore, violated the Article 31 of the Trademark Law, which is “Application of trademark registration shall not prejudice to the prior right of another person”;
II. Whether the registration of the Disputed Trademark has violated the Article 10.1.8 of the Trademark Law, which is “damaging to socialism morality or having other unhealthy influences”;
III. Whether the registration of the Disputed Trademark has violated the Article 41.1 of the Trademark Law, which is “the registration of a trademark was acquired by fraud or any other unfair means”.

Although the evidence presented in “QIAODAN” series cases by the relevant parities were the same as those in the “乔丹” cases, unlike the latter ones, the Court determined that the Retrial Applicant is not entitled to the name right in “QIAODAN”, and therefore, the registration of the Disputed Trademark has not damaged his prior name right and does not violated the Article 31 of the Trademark Law. The Court considered that in case of applying the prior name right protection in the Article 31 of the Trademark Law, the pinyin formed name “QIAODAN” must also fulfill the three conditions as those fulfilled by “乔丹” mentioned above; however, all the evidence, such as media reports, books and monographs, trial records, investigation reports and so on, submitted by the Retrial Applicant, were insufficient to prove that the relevant public has referred “QIAODAN” to the Retrial Applicant, or there has been stable corresponding connection between the “QIAODAN” and the Retrial Applicant. Thus, the Retrial Applicant is not entitled to the prior name right in “QIAODAN”. In addition, the Court also determined that the registration of the “QIAODAN” series trademarks have violated the Article 10.1.8 and 41.1 of the Trademark Law.

Accordingly, the Court decided to maintain the Second Instance Court Judgment made by the Beijing Higher People’s Court, and reject the Retrial Applicant’s retrial requests.

Comment

As a series of high profile cases, these judgments will no doubt have an important influence on the prior name right protection in the trademark administrative dispute in future. More specifically, issues as follows are worth of attention:

1. The Supreme Court confirmed that the name right could constitute the “prior right” provided in the Article 31 of the (2001 amended) Trademark Law, and explicitly stated the three conditions of the prior name right protection in the Judgment, which are (1) such specific name has certain fame in China and is acknowledged by the relevant public; (2) the relevant public refer such specific name to the natural person; (3) such specific name has established stable connection with the natural person.
2. Foreigner could be entitled to the prior name right protection with respect to part of the Chinese translated name of his/her foreign name, on the premise that such part of the Chinese translated name fulfills the three conditions mentioned above. In the “乔丹” case, “乔丹” as the translation of the Retrial Applicant’s surname Jordan, was granted protection for the prior name right.
3. As to the name right in the pinyin formed name, the three conditions for the prior name right protection may also apply. However, it would be much difficult to prove such conditions with evidence in practice, since it is rarely to refer a subject with its pinyin formed name in China, no matter such subject is a foreigner or not. Not to mention that, according to the pronunciation rules of pinyin, a simple pinyin form (e.g. qiaodan) may be referred to various Chinese characters combinations with different meanings and tones. That is the reason why, based on the same evidence as the proof of the Retrial Applicant’s fame in China, “乔丹” was recognized as having stable corresponding connection with the Retrial Applicant, but “QIAODAN” was failed.
4. The Court considers that“use of a specific name” is one of the right contents entitled by the name right owner, other than his/her obligation, nor the prerequisite for claiming the protection of the name right against other’s interference, usurpation and false representation. Thus, as long as it fulfills the three conditions mentioned above, a natural person is entitled to obtain the name right protection for his/her inactively used specific name.
5. When determining the degree and fame of the Retrial Applicant in China as well as other issues, such as bad faith registration, misidentification in the relevant public and so on, the Court repeatedly mentioned some evidence submitted by the Retrial Evidence, including but not limited to:
• 282 articles concerning the Retrial Applicant published on the People’s Daily, the Can Kao Xiao Xi, the Economic Daily News, which have relatively high authoritative and wide influence in China, from June 26, 1984 to May 22, 2010;
• 1376 articles involving the Retrial Applicant published on all types of Chinese magazines, not just limited to sports magazines, from June 1985 to January 2012;
• 26 books and monographs concerning the Retrial Applicant published in China from 1984 to 2011;
• Websites such as Tencent, Chinanews, online, Chinadaily, 163, etc published articles concerning the Retrial Applicant’s visit to China for relevant business event on October 2015; and
• Two Association Investigation Reports between Michael Jordan (迈克尔•乔丹) and the Qiaodan Sports Brand (China, Shanghai) (collectively as “Two Reports”) made by the Zero Investigation Company in 2012, which were not only notarized by the notary offices respectively, but also attached the “technical specification”, “questionnaire” and question “cards” to the investigation conclusion.

Thus, it is safe to say that such massive media exposure over the past 30 years has played very important role in proving the Retrial Applicant’s degree and scope of the fame in China. Also, the admission of the two Investigation Reports was also inspiring, since it provides an example of what form of market investigation report may be credible and therefore accepted by courts as evidence.

ABOUT THE AUTHOR: Fei Dang
Fei Dang is an Associate in the MMLC Group.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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