Key Lessons from Michael Jordan v Qiao Dan [2020] 🏀

 

Finally VICTORY, but not quite The Last Dance!!! 

I recently began watching Michael Jordan's 10 Part series, The Last Dance on Netflix and as a 90's Baby, an in-depth look at the Chicago Bulls Dynasty through the lens of the Sixth championship run in 1997-1998 really makes me wish I was old enough to live in the moment and watch the season unfold. Aside from this, it can no longer be denied that Michael Jordan is the most globally known Basketball Player or at least the fact that Michael Jordan has long-term and extensive popularity in China, as established in the recent Chinese Supreme People's Court (SPC - the highest Court in China). Below I will provide some background to this 8-year battle, followed by the decision ruled by the Supreme Court, the main reasonings from the SPC and lastly key strategies to prevent the abuse of your trade mark under Chinese Law.

Background to The Long Dance

This case concerns the Chinese Sportswear Company Qiaodan Sports LLC (Qiao Dan) registering the trade mark (No. 6020578) - the Chinese transliteration of the first name, middle name and last name of "Michael Jeffrey Jordan" = 迈克尔 杰弗里 乔丹, for clothing; shoes; hats, etc. under Class 25 in 2010. Michael Jordan filed an invalidation action against this trademark, on basis that the mark infringed his name right and the registration of the figure mark as in the above image mirrored that of Michael Jordan. The defendant Qiaodan countered that; 1) Jordan's full name is Michael Jeffrey Jordan and that Michael could not claim rights in the "Jordan" part alone nor its Chinese literation due to lack of distinguishability. 2) The figure in the mark was displayed in a silhouette only, with no specific facial characteristics, alluding that the relevant public for this reason would not be likely to recognise the figure as that of Michael Jordan. The SPC however has now finally ruled in favour of Michael Jordan, supporting his name right claim based on the Chinese literation part of his name. Therefore, making it clear that the word name part in the disputed mark "迈克尔 杰弗里 乔丹 " is identical to the Chinese transliteration of 'Jordan'. The key issue which remained was whether Michael Jordan enjoys image rights over the image in the trade mark and the name rights over the Chinese part in this trade mark.

English	Chinese Transliteration	Name
Michael	迈克尔	First Name
Jeffrey	杰弗里	Middle Name
Jordan	乔丹	surname

(Image Rights are recognised in China as image rights and provided as a form of codified protection unlike US law which has publicity rights which allow any individual to have the right to control over the commercial use of one's identity - though this varies depending upon the state)

A timeline of Events

The reason for discussing the timeline of this case is to explain why it took 8 years for the SPC to finally favour Michael Jordan over Qiaodan Sports LLC.

• On 31 October 2013, Michael Jordan filed a trade mark invalidation action based on his prior right of personal name and portrait - This was prior to the China Trade Mark Law Act amendment in 2013 when the trade mark invalidation action was referred to as trade mark dispute. 

• On April 14 2014, the CNIPA (the National Intellectual Property Administration of the People's Republic of China also formerly known as the Trade Mark Review and Adjudication Board before the reform of the Government organisation) made the decision to maintain the registration of mark disputed (registered by Qiaodan).  
• Michael Jordan appealed the CNIPA decision to the Beijing No.1 Intermediate Court, however, the Court made the decision to maintain the mark in question.

• Michael appealed against the first instance judgement to the Beijing High Court, on June 18 2015, which rejected the appeal and upheld the first instance decision of the CNIPA. 

• The reasoning for the CNIPA's and Court's decisions was twofold. Firstly, the name "Jordan" was considered in relation to the complete name "Michael Jordan". The CNIPA and the Court's concluded that "Jordan" was a common American surname rather than a name. It was established that the evidence was insufficient to prove 乔丹 contained in the disputed mark  "迈克尔 杰弗里 乔丹" definitely refers to Michael Jordan. For this reason, the Court's decision that Michael Jordan's claim for infringement of his right to name was not supported. With regards to the image logo, the Court established that the portrait should clearly reflect the main features of Michael Jordan, and the relevant public should be able to generally recognise the portrait as an image of Michael. The CNIPA and the Court's determined that as the image was an outline with no express features, it would be difficult for the relevant public to identify the image in the disputed trade mark as that of Michael Jordan. Therefore, Michael Jordan's claim that the disputed mark infringes on his image right was found to lack evidence and was also dismissed. 

The Decision of the Chinese Supreme People’s Court

The SPC confirmed that the CNIPA and the Court’s assessments at first and second instance judgement were not made in accordance with the facts and should have considered key evidence such as evidence submitted by Michael Jordan (published newspapers, periodicals, books and special journals from 1984 to 2012, from before the registration of the disputed mark – 乔丹 – which was through considering the evidence established as the most common name for Michael Jordan in the Chinese Media. Additional evidence submitted by Michael Jordan’s attorney included two pieces of investigation reports. The investigation process was notarized by the Notary Office. The investigation reported on surveys which indicated that when asked a large portion of interviewees believed the name “乔丹” made them think of Michael Jordan and that they mistakenly believed there is a link between Michael Jordan and Qiaodan Sports. The SPC confirmed in the decision that the investigation procedure was sufficient evidence when considered with the relevant facts of the case to prove a relatively high correlation between the disputed mark and Michael Jordan.

Name Rights

The Supreme Court held:

1. 乔丹 has been widely known by the relevant Chinese public as referring to Michael Jordan. The Supreme Court for this reason held that Michael Jordan had name rights over the Chinese transliteration of ‘Jordan’.
2. Based on the evidence submitted by Michael Jordan’s attorney, the SPC established that Michael Jordan was relatively known in China and the scope of how well – known extended beyond Basketball and that he was a relatively well-known public figure from before the application date of the disputed mark in this case.
3. Qiaodan Sports LLC knowingly took advantage of Michael Jordan’s long-term and extensive popularity in China and still applied to register 乔丹, which as a result led the relevant public to mistakenly think that the products marked with the disputed mark had a correlation with Michael Jordan, through the likes of an endorsement or licenses. The SPC for this reason established that the disputed mark registered by Qiaodan infringes Michael Jordan’s right to a prior name.

However, with regard to the right of the portrait above, the SPC held the same view as the Courts of first and second-instance judgement. The SPC explained that the “portraiture” should be identifiable, with clear identification of specific personal characteristics of a natural person. However, in this case, the image in question was a black silhouette of a human figure, with no personal characteristics of Michael Jordan except the outline of a body which the SPC stated was not clearly identifiable as Michael Jordan. Additionally, the SPC confirmed that Michael Jordan does not enjoy other legal rights in respect of the action that appeared in the disputed mark and other natural persons can also make the same or similar action as a result. Therefore, the claim that the registration of the disputed mark damages the right to image cannot be established.

Legal Reasonings behind the SPC judgement

1. Article 8 TMLA (Trade Mark Law Act) requires the distinguishability of a sign from the goods of others in order to be registered. The SPC applied Article 32 TMLA, which provides prior right protection to a celebrity name, as in the case of celebrity names there is the issue of their being the Chinese name and the English name and often the Chinese name is at risk of not being protected, as set out in the Article 33 conditions; that the mark has achieved a reputation in China, and is known to the relevant public, an association of the name with Michael Jordan. 
2. Michael Jordan being a foreign celebrity name means there is an additional requirement that the disputed mark, 乔丹 is one which the relevant Chinese public associates with its English name “Michael Jordan”. As illustrated in this case (Michael Jordan v Qiao Dan [2020]), the need to establish a link through use of the MICHAEL JORDAN mark and his reputation was required. The change in the Law of Article 32 and Article 33 TMLA from previously requiring an exclusive link to simply “a link” suggests leniency. Michael Jordan securing his prior right and invalidating Qiaodan’s mark suggests that foreign names require an exceptional reputation of a standard which is globally well known as achieved by Jordan over time from 1984 – 2012 (the time prior to the registration by Qiaodan). In addition, the airing of The Last Dance has added to the already well-known reputation of Michael Jordan in China.
3. The establishment of a link, in this case, was determined as a “direct link” through the evidence of the investigation process (surveys). The CNIPA confirmed that examination of whether a trade mark infringes a personal name right is something the CNIPA will not consider unless the mark contains the name of a living political figure. China Trade Mark Law, therefore, holds greater protections for Political figures. Additionally, the law outright rejections applications of marks which might have an unhealthy influence on society, which was not considered the case in the case of the disputed mark, (Article 10.1(8)). 
4. The name right under Article 32 TMLA extends to cover given names, nicknames and stage names. The disputed trademark was defined as a well-established translation of Michael Jordan’s name. The name right as set out in Article 32 TMLA is designed to protect human dignity and also the economic interests of a natural person who enjoys a certain reputation in mainland China. The SPC addressed Qiaodan misleading consumers into believing that there is a direct relationship between Michael Jordan and the disputed mark via an endorsement or license. Michael Jordan’s reputation and the public’s awareness of him was determined as a crucial factor when it came to establishing infringement. Therefore, it would be difficult under Chinese Trade Mark law to protect the name of the ordinary member of the public.
5. The specific mark in this case was the full name of Michael Jordan and the direct link established would still have been sufficient if the disputed mark was simply the Chinese transliteration of “Jordan” because of the evidence provided of the high degree of Chinese consumer recognition and awareness. Conducting an investigation/questionnaire survey was the method used by Michael Jordan to show the actual confusion/misunderstanding caused amongst the relevant public, (a method which however carries heavy costs).

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Key Takeaways

Although the SPC favoured Michael Jordan, this matter has been disputed for the past 8 years. Infringement of the distinguished mark has been established yet some of Qiaodan’s marks concerning 乔丹 have been registered from as early as 1991 in different classes against which the time limit for filing invalidation actions has expired. Despite some of the marks have been invalidated through actions raised by Michael Jordan, there is no doubt that Qiaodan may now have also gained a reputation in mainland China through its use of the 乔丹 mark registered from as early as 1991. When examining cases, the office will consider the use situation in order to ensure fairness to both parties. This makes it difficult for Michael Jordan to invalidate all relevant marks and take action to completely prevent the counterparty (Qiaodan) from using its registered mark, 乔丹.

Strategies to Prevent the abuse of your Trade Mark under Chinese Law

To avoid the Michael Jordan situation, the best strategy is to register the Chinese Transliteration of a mark early in order to avoid third parties registering a similar mark in Bad faith. The issue of Bad Faith was not specifically mentioned in the case judgement but it was established by the SPC that Qiaodan had taken advantage of the reputation of Michael Jordan in China by registering the 乔丹 mark. 

The amendments to the TMLA last year, effective from 1 November 2019, provided new grounds for challenging bad faith filings although these focused greatly on Article 4 and Article 68, filings in bad faith with no intention to use, the key takeaway is the attempted clamp down on allowing registration of marks which a trade mark agency knows or should know violates Article 4 TMLA.

Brand Owners such as Michael Jordan can establish bad faith if they are able to provide evidence of the mark being registered in such bad faith. However, it would require more comprehensive background searches and a large amount of bad-faith evidence. Nonetheless, brand owners can benefit from these new grounds in opposition and invalidation applications by intervening early and filing invalidation applications early to urge the CNIPA to reject such applications during the examination stages under Article 4. The addition of the Bad Faith criteria also captures bad faith registrations from parties who have targeted registrations of multiple famous brands or have already violated bad faith provisions in previous cases. Therefore, it will be interesting if this means that there could be a future case for the image right of the Silhouette mark and also not if but when further litigation will take place for the Qiaodan trade marks registered under other class marks and their outcome.