11/30/2018 Protection of the Personal Name Rights - Case Study: Michael Jordan vs.

ael Jordan vs. PRC Trademark Review and Adjudication Board - Lexology

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Protection of the Personal Name Rights - Case Study: Michael Jordan vs. PRC Trademark Review
and Adjudication Board

China January 17 2017

On 8 December 2016, the PRC Supreme People’s Court (“Supreme Court”) rendered a partially favourable decision to the former
basketball star Michael Jordan in his four-year battle against a China-based sportswear company i.e. Qiaodan Sports Company
Limited (“Qiaodan Sports”) on the use of his name. This is a landmark decision that lays out the ground rules for protecting personal
names in trademark cases.

1. Background and Case Introduction

Michael Jordan is one of the world’s most recognisable athletes, whose name became well-known since the 1980s on the international
stage. In 2000, Qiaodan Sports, which mainly engaged in manufacturing and selling sportswear and shoes, registered “乔丹” (the
Chinese version of “Jordan” in Chinese characters) and “Qiaodan” (the Pinyin (phonetic spelling) of “乔丹”) (collectively “Qiaodan
Sports Trademarks”) as trademarks on sports products in China. Nowadays this company operates over 6,000 stores in China with an
annual turnover of approximately RMB 4 billion.

In 2012, Michael Jordan requested the Trademark Review and Adjudication Board (“TRAB”) to cancel the registration of the
Qiaodan Sports Trademarks. However, the above cancellation applications were rejected by the TRAB. After that Michael Jordan
started litigation at the Beijing No. 1 Intermediate Court and further at the Beijing High Court, but the above courts maintained the
decisions made by the TRAB. Finally, Michael Jordan applied to the Supreme Court requesting a retrial, in which the TRAB was the
defendant and Qiaodan Sports was the third party. The Supreme Court ruled that the registration of the Qiaodan Sports Trademarks
“乔丹” is in violation of the PRC Trademark Law, and, thus, their registration shall be cancelled. However, as to the “Qiaodan”
trademarks, the Supreme Court ruled that Michael Jordan has no exclusive rights to the use of the phonetic spelling of “Qiaodan”,
and, thus, the court rejected his claims in this regard.

2. Key Issue of the Disputes

The key issue of the disputes is whether the registration of the Qiaodan Sports Trademarks infringes Michael Jordan’s name rights.

a) Legal basis of the protection of the name rights

According to Article 32 of the PRC Trademark Law, a trademark application shall not infringe upon another party's prior existing
rights. The Supreme Court held that the “prior existing rights” shall refer to the rights, which are protected by the PRC General
Principles of Civil Law, the PRC Tort Law or other laws and regulations, and have been enjoyed by civil subjects before the
application date of the trademark. According to Article 99 of the PRC General Principles of Civil Law and Article 2 of the PRC Tort
Law, a natural person enjoys the rights to his or her name. The Supreme Court held that the registration of a natural person’s name as
a trademark without his or her permission, which can mislead consumers into considering that there is a connection between the goods
bearing the trademark and the person, violates Article 32 of the PRC Trademark Law.

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11/30/2018 Protection of the Personal Name Rights - Case Study: Michael Jordan vs. PRC Trademark Review and Adjudication Board - Lexology

b) Scope of the protection of the name rights

(1) Not every name right of a national person can be protected under Article 32 of the PRC Trademark Law. To invoke Article 32 of
the PRC Trademark Law to protect the name rights, Michael Jordan needed to prove that the following conditions are met:

(i) such name shall obtain fame in China and be well recognised by the public;

(ii) the relevant public shall link the name with such person; and

(iii) a connection shall be established between such name and the person.

In China, “乔丹” is the commonly used Chinese translation for Michael Jordan and it is reputable among the Chinese public.
Furthermore, the Chinese public has already connected “乔丹” with Michael Jordan. Obviously, the Chinese name of Michael Jordan
i.e. “乔丹” satisfies the above three conditions.

(2) “乔丹” is the Chinese translation of “Jordan”, while Michael Jordan’s full name is Michael Jeffrey Jordan. Therefore, the question
arose whether Michael Jordan can enjoy the name rights for the Chinese translation of merely a part of his English name.

The Supreme Court held that for the reason of language and culture, Chinese people are used to addressing a foreigner with the
Chinese translation of a part of his full name. When judging whether a foreigner can enjoy name rights for the Chinese translation of
only a part of his or her name, the court considered the Chinese people’s custom. In the case discussed, although “乔丹” is only a part
of the Chinese translation of Michael Jordan’s full name, the Chinese public is used to referring it to Michael Jordan. Therefore,
Michael Jordan owns the name rights for “乔丹”.

In light of the above, the Supreme Court supported Michael Jordan’s claims for his name rights over the term “乔丹”.

c) The Supreme Court, however, held that there was no sufficient evidence indicating that Chinese consumers associated the phonetic
spelling of Jordan i.e. “Qiaodan” with Michael Jordan, and, thus, Michael Jordan does not own the name rights over “Qiaodan”.
Consequently, the Supreme Court rejected Michael Jordan’s claims for cancellation of registration of the trademarks “Qiaodan”.

The court’s judgment eliminates confusion among Michael Jordan’s Chinese fans and all Chinese consumers regarding the
relationship between Qiaodan Sports and Michael Jordan. It also shows that the Chinese courts recognise non-Chinese citizens’ rights
to protect the Chinese translation of their names and sends a clear message of deterrence to those who file trademarks in bad faith.

CMS, China - Emily Xu

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