China's highest court gives latest ruling in Michael Jordan trade mark case

On 4 March 2020, China’s Supreme People’s Court, ruled partially in favour of the USA basketball superstar Michael Jordan over the below trade mark for “乔丹” ("Qiaodan", Jordan in Chinese characters) and a silhouetted basketball player.

(Judgment (2018) Zui Gao Fa Xing Zai No.32 (（2018）最高法行再32号)). It overruled the previous rulings made by the first and second instance courts and the Trade mark Review and Adjudication Board, which all had upheld the validity of the trade mark.  The judgment brought down the curtain on the eight-year battle over the disputed mark. 
 
Background of the case
 
The disputed trade mark (No. 6020578) was applied by Qiaodan Sports Co., Ltd. in 2007 and was approved for registration in 2010. The trade mark contains two parts: 1) the word part, “乔丹”, Chinese transliteration of “Jordan”, and 2) the device part, a silhouetted basketball player. It was designated in class 25, on goods including clothing, swimsuits, shoes, hosiery, hats, etc.
 
In 2012, NBA basketball player, Michael Jeffery Jordan (“Jordan”) filed an invalidation with the Trade mark Review and Adjudication Board (“TRAB”) against a number of trade marks that contained “乔丹”, QIAODAN or/and the silhouetted basketball player device, including the disputed trade mark, arguing that they infringed his name right and portrait right (together referred to as the “QIAODAN series trade mark disputes”).
 
In 2014, TRAB decided that the disputed trade mark did not infringe Jordan’s prior rights, therefore maintaining its validity. Jordan then filed an administrative lawsuit but also lost in both the first and the second instance. In 2017, Jordan applied for a retrial to the Supreme People’s Court (“SPC”), who accepted the case and ruled as summarised above.
 
Analysis of the SPC's judgment
 
It is not a surprise for the SPC to make this judgment. The SPC has made several judgments towards other “QIAODAN” series trade mark disputes since 2016 (see our blog about them here). In judgment (2016) Zui Gao Fa Xin Zai No.27 (“Judgment No. 27”), the SPC decided that the word mark “乔丹” owned by Qiaodan Sports infringed Jordan’s name right. However, in ruling (2015) Zhi Xing Zi No. 332 (“Ruling No. 332”), the SPC decided that the device of the silhouetted basketball player, (the same as the device in the disputed trade mark), did not infringe Jordan’s portrait right. This case is essentially a reiteration of the above judgment and ruling.
 
A.        The word element of the disputed trade mark
 
I)    “乔丹” has a high reputation in China. The relevant public usually refer to Jordan as “乔丹”, resulting in a stable corresponding relationship formed between the word “乔丹” and Jordan. Therefore, Jordan enjoys the name right over “乔丹”.
 
Jordan’s full name is “Michael Jeffrey Jordan”, the Chinese transliteration of which is “迈克尔·杰弗里·乔丹”. The word contained in the disputed trade mark is “乔丹”，not exactly the same as Jordan’s full name or its Chinese transliteration. In addition, Jordan is a common family name for Americans and “乔丹” is merely its transliteration, so “乔丹”does not necessarily point to Jordan. These were the difficulties Jordan had to overcome and also the reasons given by TRAB and the first and second instance courts to rule against him.
 
The SPC mentioned in the Judgment No.27 that the interests between the name right holders and the trade mark owners should be balanced when deciding the scope of protection of the name right. On the one hand, if the trade mark contains the name of a natural person which is known only by a group of people or is used temporarily, it should not be considered as an infringement of the name right of that natural person. On the other hand, since no one can stop others from having the same name in goodwill and legally, the scope of protection should not be restricted to requiring an identical match between the natural person and his/her name. In conclusion, the SPC put forward three criteria that should be taken into account when considering whether a name is within the scope of protection of a natural person’s name right:

1. The name has acquired relatively high reputation in China and is familiar to the relevant public;

2. The relevant public refer to that natural person by the name; and

3. A stable corresponding relationship has formed between the name and the natural person.

Based on these criteria, the SPC re-examined the evidence of this case, overruled the judgment of the lower courts and ruled that Jordan enjoyed a name right over “乔丹”. The reasons are as follows:

1. The reputation of “乔丹” is not limited to the field of basketball, but well-known among a wider range of the public;

2. The relevant public in China usually refer to Jordan as “乔丹”；and

3. A stable corresponding relationship has formed between “乔丹” and Jordan.

 
In contrast, in some of the other cases in the “QIAODAN” series trade mark disputes, such as in the judgment (2016) Zui Gao Fa Xing Zai No.31, the SPC ruled that “QIAODAN”, the phonetic transcription of “乔丹” (i.e. the phonetic transcription of the Chinese transliteration of Jordan) was not within the scope of Jordan’s name right. This was because there is not sufficient evidence so far to prove that the relevant public in China will refer to Jordan as “QIAODAN”, consequently no corresponding relationship has formed between Jordan and “QIAODAN”.
 
II)   It will lead to consumers’ confusion towards the source of the goods if “乔丹” is used on certain goods.
 
The SPC stated that it should be considered whether the disputed trade mark will lead the relevant public to mistakenly believe that the goods or services with the trade mark have a certain relationship, such as endorsement, licensing, with the natural person, to judge whether it is an infringement of Jordan’s name right.
 
To prove that such confusion does exist, Jordan submitted a large quantity of evidence, including reports from an investigation company, showing that most respondents in a survey thought Jordan had a certain relationship, such as “brand ambassador”, “licensing”, etc. with Qiaodan Sports. Also, the prospectus of Qiaodan Sports, which stated that its corporate name is the same as Jordan’s family name and “may cause confusion and misunderstanding among some consumers to connect Michael Jordan with the issuer”. All of the evidence proved that not only many people in China mistakenly believe that Jordan has a certain relationship with Qiaodan Sports, but Qiaodan Sports itself also knows and admits this kind of confusion while still applying the disputed trade mark. The SPC adopted the evidence and recognised that the dispute trade mark easily led to consumers’ confusion.
 
In conclusion, “乔丹” has a high reputation in China and the relevant public usually refer to Jordan as “乔丹”, resulting to a stable corresponding relationship formed between the word “乔丹” and Jordan. Consequently, Jordan enjoys the name right over “乔丹”. The disputed trade mark contains the word “乔丹”, the registration and use of which will lead to consumers’ confusion towards the source of the goods, mistakenly believing that the related goods have a certain relationship with Jordan, such as endorsement and licensing. Therefore, the disputed trade mark infringed Jordan’s name right.
 
B.        The device element of the disputed trade mark
 
The SPC stated in Ruling No.332 that the device in a trade mark should firstly be recognisable to be considered as an infringement of a person's prior portrait right. According to common recognition behavior, facial features are the main source of recognisability. If a portrait under dispute did not show facial features, there should be other sufficient evidence to prove that characters in the portrait clearly and definitely point to a natural person.
 
In this case, the device in the disputed trade mark is a silhouetted basketball player, which lacks recognisability according to the SPC. Firstly, the portrait is silhouetted and grey, without any recognizable information such as facial characters, jersey or number plate. Next, the outline of the device does not contain any specific personal features that can be corresponded to Jordan. Finally, Jordan does not enjoy any rights over the gesture in the device; on the contrary, anyone else can pose a similar one. Therefore, the device does not clearly and definitely point to Jordan and Jordan does not enjoy portrait right towards the silhouetted basketball player device in the disputed trade mark.
 
C.        Comment
 
The SPC decided that the device part of the disputed trade mark did not infringe Jordan’s portrait right, but the word part infringed Jordan’s name right. Therefore, the disputed trade mark is destined to be invalidated. However, Qiaodan Sports issued an announcement on 8 April, saying that the judgment of this case “will not affect the normal use of the trade marks presently owned by our company, nor will it affect our normal business operation”, because “we have won 74 cases concerning 74 trade marks that have been registered for more than 5 years”.
 
Let us look back on the “QIAODAN” series trade mark disputes. Jordan submitted invalidation applications in October 2012 against dozens of trade marks, containing “乔丹”, “QIAODAN” or/and the silhouetted basketball player device, owned by Qiaodan Sports. But all of those applications were rejected by TRAB. Jordan filed the administrative lawsuits, but the courts also judged against him. Then, Jordan filed retrial applications with the SPC. Except for the following 11 cases that were accepted and heard and few cases that were suspended, the others were all dismissed.
 

Case No.	Trade mark No.	Trade mark	Registration Date	Current Status	Main Judgment of the Court
（2016）Zui Gao Fa Xing Zai No.15	6020565	乔丹	2009/12/14	Invalid	“乔丹” infringed Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No.20	6020566	Qiaodan	2009/12/14	Registered	“QIAODAN” did not infringe Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No.25	9292836		2012/04/14	Registered	“QIAODAN” did not infringe Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No.26	4152827	乔丹	2008/02/21	Invalid	“乔丹” infringed Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No. 27	6020569	乔丹	2010/03/28	Invalid	“乔丹” infringed Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No. 28	9292824		2012/04/14	Registered	“qiaodan” did not infringe Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No. 29	6020571	QIAODAN	2010/03/28	Registered	“QIAODAN” did not infringe Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No. 30	6020568	QIAODAN	2010/03/07	Registered	“QIAODAN” did not infringe Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No.31	6020575	QIAODAN	2010/03/14	Registered	“QIAODAN” did not infringe Jordan’s name right.
（2016）Zui Gao Fa Xing Zai No.32	9286585		2012/05/14	Registered	“qiaodan” did not infringe Jordan’s name right.
（2018）Zui Gao Fa Xing Zai No.32（this case）	6020578		2010/04/21	Registered （will be invalidated according to the judgment）	“乔丹” infringed Jordan’s name right；the device did not infringe Jordan’s portrait right.

 
As shown from the above-mentioned judgments, the SPC has considered that the trade marks registered by Qiaodan Sports should be invalid if they contain a separate word of “乔丹”, but those that contain “QIAODAN”/ “qiaodan” or a silhouetted basketball player device and without the word “乔丹” continue to be valid. It is worth noting that the SPC dismissed many cases concerning trade marks registered by Qiaodan Sports in or before 2007 because Trade mark Law in China entitles the right holders to apply for invalidation only against those trade marks that have been registered for less than five years. Qiaodan Sports applied for a batch of trade marks containing “乔丹” in 2000 and the earliest of them were approved for registration in 2001.
 
However, is it true that, as Qiaodan Sports stated in its announcement, the judgment of this case will not affect the normal use of their trade marks? Although Jordan is not able to invalidate the QIAODAN series trade marks that have been registered for more than five years through trade mark invalidation applications and administrative lawsuits procedure, is it possible that civil courts will confirm the action of Qiaodan Sports as infringement of Jordan’s name right and grant injunction to stop Qiaodan Sports from using those trade marks? In fact, Jordan has brought a civil lawsuit against Qiaodan Sports in Shanghai in 2012 over his name right and Qiaodan Sports responded with another suit against Jordan in Fujian in 2013, asserting that the lawsuit in Shanghai damaged its reputation. Neither of the two cases have received a judgment from the court so far. We shall wait and see to what extent the “QIAODAN” series trade mark disputes will have impact on the trade mark use and business operation of Qiaodan Sports.