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China Trademarks: Michael Jordan Emerges Victorious (Sort of)
In a surprising decision the Supreme People’s Court of China gave Michael Jordan a partial victory in his long-running trademark battle with Qiaodan Sports. As I wrote last year, Jordan has been trying for years to cancel trademarks he alleges Qiaodan Sports registered in bad faith, including the marks “乔丹” (the Chinese-language version of “Jordan”) and “Qiaodan” (the pinyin version of 乔丹). Previously, Jordan has lost at every step of the way; the Trademark Review and Adjudication Board and various Chinese courts have all rejected Jordan’s argument that “乔丹” was already well-known and associated with him personally at the time Qiaodan Sports filed its trademarks.
But the highest court in China today ruled that in fact “乔丹” was well-known and associated with Michael Jordan personally, and that therefore Qiaodan Sports’ trademark registrations for “乔丹” should be invalidated. I have not seen the decision yet but from what has been reported in the Chinese media, the decision does not include any rationale; it just announces the outcome, leaving us to draw our own conclusions.
It’s tempting to see this decision as a harbinger of better times for foreign companies seeking to protect their brand in China. Particularly in light of the recent decision in favor of Donald Trump that similarly recognized the word “Trump” as being well-known. But I would be cautious about taking that view, for several reasons.
First, this decision and the Trump decision were for trademarks that were associated with a person’s name. For some time now, Chinese courts have been more likely to protect a trademark that is a person’s name (versus a random company name). Even a few years ago, Jordan would have had no trouble invalidating a trademark squatter’s application for “Michael Jordan.”
Second, Jordan only won a partial victory. Although the court found “乔丹” was well known and associated with Michael Jordan, it also found that “Qiaodan” was not. It’s difficult to rationalize the distinction. Presumably the court determined that (1) Jordan is too common a name to register as a trademark and “Qiaodan” is the standard pinyin transliteration for that name, and/or (2) any number of Chinese characters could be put together to form “Qiaodan” and therefore the connection was too tenuous. But these arguments are rather flimsy; if you look in a Chinese dictionary, the only word that the pinyin “Qiaodan” resolves to is “乔丹,” which has a single meaning: the name “Jordan.” Why grant protection to “乔丹” but not “Qiaodan”?
Third, this decision was decided on narrow grounds. Though the court ultimately accepted the argument that “乔丹” was well known and associated with Michael Jordan, it rejected his argument that Qiaodan’s registrations were “detrimental to socialist morals or customs, or having other unhealthy influences” or acquired by “improper means.”
Fourth, this decision is anomalous under current China trademark practice. The vast majority of Chinese trademark decisions are still coming out in favor of trademark squatters, and it is all but impossible to prove that a mark filed by a trademark squatter was well-known in China at the time of the application. It’s hard not to share the cynical view that something else is going on below the surface here. Just a few weeks ago Nike opened its “Jordan” store on Tmall, which looks prescient given the timing of the court’s ruling. Or maybe it’s as simple as the case being heard in front of a sympathetic chief judge.
The Supreme People’s Court’s decision is final and cannot be appealed further. So while Qiaodan Sports can no longer use “乔丹” on its goods, it can continue using “Qiaodan” for as long as it wants, without threat of further interference. Jordan may be claiming victory in the press, but he can’t be happy that Qiaodan Sports will get to use “his” name forever.
Because this decision was so unexpected, the immediate consequence is to introduce even more uncertainty to the trademark registration process. Probably many more owners of allegedly “well-known” marks will be encouraged to begin invalidation proceedings in China. I can’t say I blame them, but it’s not much of a strategy. The only realistic way to establish trademark rights in China is to file a trademark application in China.
We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.
Source: http://www.chinalawblog.com/2016/12/china-trademarks-michael-jordan-emerges-victorious-sort-of.html
