Guest post by Ouyang Yini, who is doing the unique combination of U.S. J.D. and China J.M. legal education at PKU STL in Shenzhen.
Michael Jeffrey Jordan, one of the greatest NBA basketball players in the United States, is also popular in China in the name of Qiaodan, which is the Chinese translation/transliteration of his surname Jordan. In 2012, Michael Jordan asked the China Trademark Review and Adjudication Board (TRAB) to cancel the “Qiaodan” trademark owned by Qiaodan Sports Co., Ltd. (Qiaodan Sports) mainly for the reason that the accused “Qiaodan” trademark violated Trademark Law, Article 31, that “anyone applying for trademark registration may not damage the existing rights of others obtained by priority.” The “Qiaodan” trademark was approved for use in category 28 of the Nice Classification, including equipment for various sports and games. Michael Jordan argued that the “Qiaodan” trademark infringed his right of name, which should be protected by the Article 31. However, TRAB refused to cancel the “Qiaodan” trademark for two reasons:
(1) Qiaodan is only one part of Michael Jordan’s Chinese name, and he never uses Qiaodan to call himself;
(2) Jordan is an ordinary surname in the United States, and unique relationship has not been established between Michael Jordan and Jordan in the sense of a surname.
Michael Jordan was unhappy with the result, so he filed a lawsuit against TRAB asking the court to order TRAB cancelling the “Qiaodan” trademark. Unfortunately, both the trial court and the appellate court were on the TRAB’s side and affirmed the decision. Michael Jordan petitioned for a retrial and the Supreme People’s Court granted his petition. The Supreme People’s Court started with confirming that the right of name is one of “existing rights” that Article 31 aims to protect, since a trademark might mislead the public to believe there are some special connections between the trademark and a celebrity, such as endorsement or license. The issue left to be resolved was whether the right of name could extend to the surname, even to the translation of such surname. The Supreme People’s Court pointed out that a specific name could be protected by the right of name if the following three conditions are satisfied:
(1) such specific name is well-known to the relevant public in China;
(2) the relevant public usually uses that name referring to an individual;
(3) the specific name has established a stable relationship with the individual.
Actually, the Supreme People’s Court rejected TRAB’s “unique relationship” test, which is to say that Qiaodan can only refer to Michael Jordan, but only required that people in China will at first think of Michael Jordan when they hear Qiaodan. And the standard is what the relevant public think of, not whether Michael Jordan uses Qiaodan to refer to himself.
The Supreme People’s Court held that according to the present evidence, all above three conditions were satisfied and Michael Jordan was entitled to the right of name of Qiaodan. First, a large number of articles, published on newspapers, periodicals and websites, used Qiaodan to refer to Michael Jordan, as well as some books, which proved that in China, the media generally called Michael Jordan by the name of Qiaodan. Second, in the trial transcript, Qiaodan Sports admitted that Qiaodan was somehow relevant to Michael Jordan, but such connection is not sole or unique. Third, Qiaodan Sports in its prospectus reminded the public not to misunderstand its products having any relevancy with Michael Jordan, and this demonstrates that Qiaodan Sports actually realized the existence of likelihood of confusion. Last, there were two surveys revealed that respectively 85%, 63.8% respondents would answer Michael Jordan when they were asked “what might first occur to you when you hear about Qiaodan”, and only 14.5%, 24% would answer Qiaodan Sports. Therefore, the Supreme People’s Court concluded that there was sufficient evidence to establish stable connection between Michael Jordan and Qiaodan.
Qiaodan Sports contended the “Qiaodan” trademark’s registration should not be deemed illegal anymore due to the company’s continuous contributions for more than a decade and huge business success. The court rejected this contention saying that although consumers could identify Qiaodan Sports as the source of products for its endeavor in advertising and promotion, it did not mean that consumers would not misunderstand that there was some relationship between Qiaodan Sports and Michael Jordan. We cannot say because the entity acquires huge success through free riding, then its action of free riding is not wrong. Such behavior is prohibited under trademark law no matter how successful the business is. Finally, the Supreme People’s Court ordered TRAB to reevaluate the accused trademark in consistence with the holding, which led to cancellation of the “Qiaodan” trademark.
The “Qiaodan” trademark is only one of the series of trademarks registered by Qiaodan Sports that is more or less related to Michael Jordan. Still many trademarks containing a “Qiaodan” element are valid because the five-year period regulated by Article 41 Section 2 has passed and the trademarks become incontestable. But Qiaodan Sports’ public image might be damaged if it continued to use these trademarks with the purpose of free riding because consumers would not be fooled again. This case shows our country’s resolution to protect intellectual property right and deter further free riding. Chinese business entities should make efforts to establish their own trademarks and then goodwill, only in this way can they become strong enough to compete on the international “battle field.”
Ouyang Yini