Michael Jordan scores another important win concerning the dispute over the right to use and register the Chinese character “乔丹” (Qiaodan, Jordan in Chinese).
On 20 April, the Supreme People’s Court (SPC) ruled in favour of Michael Jordan in his dispute against Qiaodan Sports, a Chinese company, in relation to the application for “乔丹” in class 25 (clothing). This follows the SPC’s decision on 7 December 2016 to similarly refuse the registration for “乔丹” in class 28.
The SPC considered the word "Jordan" to be highly popular and found that the relevant public in China usually refers to “乔丹” (Qiaodan) as Michael Jordan. The SPC also found that Michael Jordan was a figure with a high reputation in China before the date of the disputed trade mark application and that his popularity was not limited to basketball.
According to the SPC, the applicant was well aware of Michael Jordan’s extensive reputation and that the disputed trade mark was likely to cause the relevant public to believe that Qiaodan Sports' goods or services emanated from or were otherwise associated and/or endorsed by Michael Jordan, when they were not. As such, the application violated Article 31 of the 2001 China Trademark Law (natural persons right to enjoy their name) and was refused registration.
Importantly, the SPC rejected Michael Jordan’s claim to “portrait rights” in the figurative element of the disputed mark:
The SPC reiterated that in order to claim portrait rights, a portrait needs to be “recognisable” and must contain sufficient personal characteristics to enable the relevant public to identify and associate the portrait with a specific natural person. In the case at issue, the device only pictured a silhouette figure, which did not contain any of Michael Jordan’s personal characteristics. The silhouette could easily refer to any other natural person and therefore no portrait rights could subsist.
Brand owners have long suffered from the problem of trade mark squatting in China. As readers may recall, in 2019 China revised its Trade Mark Law and implemented new rules aiming to curb bad faith trade mark filings and registrations.
This decision is yet another example of how China is determined to try to control and limit bad faith applications, with the overarching objective to create a fairer and more reliable legal environment for trade mark owners and encourage overseas investments.
While China’s evolving stance on bad faith is certainly welcomed, the process of opposing a trade mark application remains lengthy and costly. Therefore, trade mark owners should continue to carefully consider and review their filing strategy in China to ensure their marks are adequately protected.
"The verdicts of the SPC show the determination of the Chinese government to curb bad faith applications."