Why the latest Jordan Qiaodan case leaves uncertainty about trademark protection in China

On December 8, 2016, the Supreme People’s Court of China released with a live broadcast online its ruling on the validity of 10 trademark registrations related to Michael Jordan. It ruled that three “乔丹” (Mandarin transliteration for Jordan, pronounced [tɕʻiau dan]) trademark registrations, by Qiaodan (Pinyin[1] of Mandarin transliteration for Jordan) Sports Company Limited (hereinafter “Qiaodan Sports”), a Chinese sportswear company, shall be cancelled,[2] but seven “QIAODAN” trademark registrations shall remain intact.[3]

Since the prerequisites for a name to be protected in China has long been dubious, this ruling may be deemed as a milestone for cases concerning the same subject. Most people welcomed the ruling that the registration of trademark “乔丹” infringed Michael Jordan’s right in his name. Some media acclaimed after the ruling: the equation “乔丹= Jordan” has been accepted by the judges finally after 4 years of fighting.

The Court made it clear that the only requirement for name protection is a solid association between a name and a particular person in the public’s minds. There is no need for the name to be the sole name to designate a person, or the name to denote one person only, or the name to be a formal name registered at a local police office. The Court’s ruling on this matter is in line with both common sense and the practice in many jurisdictions, including Mr. Jordan’s motherland the United States.[4] For example, if Hillary Clinton had won the presidential election of the United States, “克林顿” (Mandarin transliteration for Clinton) would definitely denote to more than one person in the minds of the public in China. But the public would sure to be annoyed if a trademark “克林顿” was registered by someone without authorization by Bill or Hillary Clinton.

Still, the ruling left two important pertinent issues unanswered.

First, it is hard to accept that the Court refused to protect QIAODAN while it pointed out that QIAODAN is the pinyin of 乔丹. It has no meaning in English or other popular foreign languages in China. When the public see "QIAODAN", they connect it with the Chinese characters乔丹 and the basketball player Mr. Jordan right away. It is exchangeable with 乔丹 and thus should be protected as the same. With the Court’s refusal to protect QIAODAN for a failure to prove the association between the pinyin and Mr. Jordan, does he need to spend another 4 years to do survey to prove that “QIAODAN=乔丹”?

 Second, deception to the consumers as to the association between trademark “乔丹” and Michael Jordan was constructed in this ruling. However, the association was denied to be considered in several rulings by the same Court in 2015 with the reason that a name can be protected as a private right.[5] It should be noted that it is well-accepted that deception to the consumers is one of the absolute grounds for refusal of registration listed in Article 10 of China Trademark Law.

Trademark law emphasizes the protection of public interest, as other intellectual property laws do. Private right in trademarks is rather a means than an end. Trademark law protects the economic interest of trademark owners as an approach to stimulate their efforts to prevent purchaser confusion. Purchaser confusion is a form of damage to public interest.

Though there appears a conflict with its previous rulings, this latest ruling by the Supreme People’s Court did not reverse its former rulings published at the end of last year. We will now have to wait and see if a rehearing of the other cases that have been reheard and dismissed once by the Supreme People’s Court in 2015 concerning the validity of trademarks "乔丹”, “乔丹QIAODAN”[6] and “乔丹QIAODAN & device”[7] registered by Qiaodan Sports for different classes products respectively possible?

As very little binding is vested in precedents in China, the outcome of court decision on disputes is less predictable than it should be. Thus, for those individuals and brands looking to opportunities in China more emphasis should be on the prevention of disputes, which can be reduced by the deployment of in-time trademark registration. However, where a dispute cannot be avoided, the author would advise contacting a local trademark lawyer as soon as possible.

• Basketball China China Trademark Law Intellectual Property National Basketball Association (NBA) Supreme People’s Court of China Trademarks United States of America (USA)