Michael Jordan Prevails in Eight-Year Trademark Battle at China’s Supreme People’s Court

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In a long-running dispute with Qiaodan Sports Co., Ltd., Michael Jordan recently prevailed at China’s Supreme People’s Court in revoking a trademark for “Qiaodan and Device”  (Qiaodan is the transliteration of Jordan into Chinese).  The China National Intellectual Property Office (CNIPA) must now reexamine the trademark in light of the Court’s ruling.

On April 26, 2007, Qiaodan Sports applied for the “Qiaodan and Device” trademark No. 6020578, which was approved for registration on April 21, 2010 in class for 25 clothing, swimwear, and other commodities.  On October 31, 2012, Michael Jordan filed a request to cancel the trademark with the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (the predecessor of the CNIPA), which ruled for Qiaodan Sports. Jordan then filed an administrative lawsuit with the Beijing Intermediate People’s Court and lost, appealed that decision to the Beijing Higher People’s Court and lost, and appealed that decision to the Supreme People’s Court, which finally ruled in favor of Jordan.

The Supreme People’s Court stated that Michael Jordan “has a high reputation in China and is familiar to the relevant public. The relevant public in our country usually refers to the applicant for retrial by “Qiaodan.” … Before the application date of the disputed trademark in this case, until 2015, the retrial applicant had a high reputation in China, and its reputation has not only been limited to the field of basketball, but has become a high-profile public figure.”

The Court further explained that “natural persons have the right to their name in accordance with the law. Unauthorized registration of a name as a trademark may easily lead the relevant public to mistakenly believe that the goods or services marked with the trademark have a specific endorsement, permission, etc., that is related to the natural person. This violates the provisions of Article 31 of the Trademark Law. In this case, the disputed trademark was formed by combining the device above and “Qiaodan” below. Qiaodan Company knows that the applicant for retrial has a long-term and widespread reputation in China, and still uses “Qiaodan” to apply for the registration of the disputed trademark, which may easily lead the relevant public to mistakenly believe that the goods marked with the disputed trademark have specific endorsements, licenses and other specific links with the retrial applicant, which damages the prior name right of the retrial applicant. Therefore, the registration of the disputed trademark violates the provisions of Article 31 of the Trademark Law.”

Jordan also claimed “portrait right” (similar to the right of publicity) in the device – a silhouette of a basketball player.  However, the Supreme People’s Court reasoned ” “portraits” protected by portrait rights should be recognizable, which should contain enough personal features for the public to identify the corresponding rights subject,… The device in the disputed trademark logo is just a black human-shaped silhouette. Except for the body outline, it does not contain any personal characteristics related to the retrial applicant…Therefore, the retrial applicant cannot enjoy the right of portrait with respect to the mark…”  This may have implications for Bruce Lee’s heirs’ lawsuit against the Real Kung Fu fast food chain for infringement of Bruce Lee’s portrait right.

 

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

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Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.