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Lessons from China: Michael Jordan versus Chinese trade mark law

Posted on 21 August 2015 by Ray Black & Liz Ellen

Lessons from China: Michael Jordan versus Chinese trade mark law

Michael Jordan is one of the most widely marketed athletes in history. As he stated in 2012, "during my basketball career and now as a businessman, I’ve worked hard to establish my identity and brand, and I take tremendous pride in the shoes and apparel that feature my name and logo." Nonetheless, despite a prolonged and expensive legal battle, following the decision of the Beijing Higher People's Court in June, Jordan has become the latest Western brand name to lose a trade mark dispute in China.

Michael Jordan v Qiaodan

In the 1990s, as basketball gathered popularity in China, Michael Jordan registered his English name as a trade mark. He did not, however, register any Chinese version or transliteration and subsequently, in 2000, a Chinese sportswear company began selling basketball shoes and apparel under the name 'Qiaodan', a transliteration of 'Jordan'. The company registered marks with Jordan's shirt number '23', whilst using a similar logo to the 'Jumpman' logo used to promote Nike's Michael Jordan related merchandise. Qiaodan even filed for marks consisting of Michael Jordan's sons' names.

The company was able to use these marks for almost 10 years before Michael Jordan filed a trade mark invalidation action with the China Trademark Review and Adjudication Board (TRAB). During this period, Qiaodan Sports built a significant reputation in the marketplace, establishing more than 5,700 retail outlets in China.

The Ruling

The Beijing Higher Court ruled that the Chinese public associated the Qiaodan marks with Qiaodan Sports rather than with Michael Jordan. Furthermore, the court considered 'Jordan' to be a common American surname, not necessarily associated with Michael, and that Qiaodan was only one of the possible transliterations for 'Jordan'. As a result, Qiaodan's trade marks constituted neither an infringement of Michael Jordan's right to his name, nor an act of unfair competition, and all 68 cases were decided in favour of Qiaodan.

Lessons for the Future

Michael Jordan's case acts to highlight many of the potential pitfalls for both individuals and companies wishing to protect their brand in China. The 'first to register' system used in Chinese trade mark law presents problems for Western brands accustomed to a system that favours the party who uses the mark in business first. However, the example provided by fellow NBA professional Allen Iverson proves that with a proactive strategy, these issues can be overcome. Mr Iverson filed an invalidation request almost immediately after an application for 'Iverson' had been filed and was successful in defending his name against registrations before the Beijing Higher People's Court in 2014.

Ideally, one would register their trade mark in China as soon as possible, registering both English and Chinese versions and utilising expert help with regards to the appropriate Chinese transliteration. Additionally, parties must remain vigilant and where there has been an infringement, a legal challenge should be launched as soon as possible. In this way, parties can ensure that they avoid the fate of Mr Jordan and are able to successfully defend both their trade marks and name rights.