For most of us, 2020 was, to put it mildly, not a great year. US Basketball legend Michael Jordan however may disagree. Not only did he launch the Netflix hit-series “The Last Dance”, which revolves around his successful career, he also managed to score a legal win in the nick of time (30 December 2020).
On 30 December 2020 the Shanghai Second People’s Court of the people’s Republic of China ruled in favor of Michael Jordan against a Chinese sportswear company called “Qiaodan Sports” over the use of Michael Jordan’s Chinese name.
Chinese sportswear company Qiaodan Sports has been using the Chinese name “Qiáo dān” (乔丹), which is the Chinese transliteration of the name “Jordan”, for around 20 years, often in combination with a logo which resembles the former US Basketball player. Over the years Qiaodan Sports also registered several trademarks containing the Chinese transliteration of Jordan’s name (乔丹). As a consequence Michael Jordan brought a lawsuit against Qiaodan Sports, claiming that the sportswear company infringed upon his right to name.
The right to name
According to Chinese civil law, when someone misappropriates your name or deliberately causes confusion regarding your name, you can demand the infringement is stopped immediately. Furthermore, you can claim financial compensation and demand any harm done to your reputation is remedied.
This raised the question whether Michael Jordan, a US basketball player and US citizen, could indeed claim a right to name to “乔丹” (pronounced Qiáo dān), a simplified version of the Chinese transliteration of his name. The Court pointed out that the right to name protected by law is not limited to the name recorded on an natural persons’ passport or ID. It also includes translations and transliterations, or even aliases and screen names, if they are well-known to the public. In this case, major Chinese media outlets have been reporting on Michael Jordan’s career for decades, using the Chinese transliteration “乔丹”. As a consequence the Court deemed that a specific connection between Michael Jordan and (乔丹) has been established, which is well-known to the public. The Court therefore concluded that Michael Jordan indeed has a right to the Chinese name “乔丹” (Qiáo dān).
Not just an ordinary name
Qiaodan Sports argued it was using the name “Jordan” because it is an ordinary surname, which is very commonly used in the US and the UK. It stated that in no way it had based its brand and company name on the US basketball legend.
The Court however quickly dismissed this argument pointing out that Qiaodan Sports had also registered the trademarks “23” (Jordan’s old shirt number), “Marcus Jordan” and Jeffrey Jordan” (the names of Jordan’s two sons). In addition, Qiaodan Sports used Jordan’s name specifically for basketball and baseball related goods. And although the protection of the right to name is not limited to a specific field, it played an important factor that Qiaodan Sports used Jordan’s name specifically for the sports in which he was active. The Court concluded that Qiaodan Sports clearly had the intention to mislead the public.
My name vs your trademark
Qiaodan Sports defended itself in saying that nevertheless it owned several legally registered trademarks containing Jordan’s name (乔丹). Therefore, it also had rights to the name.
The Court started by saying that name rights belong to personality rights, while trademark rights are property rights. When these two conflict with one another, it has to be taken into account that name rights, as a category of personality rights, are less exclusive. However, this does not mean it is allowed to intentionally confuse the public by trademarking another person’s name. The court concluded that when personality rights conflict with (intellectual) property rights, a high-level value and protection priority of personality rights should be established.
The outcome: too little too late?
The Court ordered Qiaodan Sports to immediately stop using Qiaodan (乔丹) in its trade name and company name and to publicly apologize to Michael Jordan in several Chinese newspapers and internet news outlets, making it clear it has no connection with Michael Jordan. Additionally, Qiaodan Sports must pay 300.000 yean (or 46.000 US dollar) for emotional distress to Michael Jordan and 50.000 yean (or 7.700 US dollar) for litigation expenses.
When it comes to the trademarks containing (乔丹) owned by Qiaodan Sports, the Court appreciated that some of these trademarks have become irrevocable, as they have been registered for longer than the legal five-year period. In Chinese trademark law, a trademark can only be invalidated on relative grounds within five years after registration. As the Court could not invalidate these long registered (乔丹) trademarks, it ordered Qiaodan Sports to add “differentiating identifiers” when using these trademarks, to clarify that they have no connection with former basketball player Michael Jordan. It will be interesting to see whether this could render the trademarks in question overtime vulnerable to cancellation for non-use.
Lessons for Chinese trademark owners
This case sheds light on the importance for both Chinese trademark owners and well known people, such as Michael Jordan, to keep an eye on the Chinese trademark register, as Chinese trademark law sets a five-year time bar on invalidating trademarks on relative grounds. After this time limit, trademarks become irrevocable.
Nonetheless, this case shows a strong stands against the common problem of free riders and trademark squatters in the Chinese market space, as the order to publicly apologize and to only use the Qiaodan (乔丹) trademarks with the clarification that no connection with Michael Jordan exists, can harm Qiaodan Sports’ public image.
Do note that this is a judgement in first instance. There is no news yet on whether Qiaodan Sports will appeal this decision to the High People’s Court.