Article by CCPIT Patent & Trademark Law Office

Michael Jordan is the retired NBA superstar and is also well known in China. Qiaodan Sports Co. is a sportswear company in Jinjiang, Fujian province of China. Qiaodan Sports registered trademarks for “Qiaodan”- a Chinese transliteration of “Jordan”, “Qiaodan” in Chinese Pinyin and their various combinations with a figure in a shadowy design showing only a silhouette.

Qiaodan Sports started to use the Chinese transliteration “Qiaodan” as its trade name since 2000. Qiaodan Sports took “Qiaodan” (in Chinese) and the figure in a shadowy design showing only a silhouette as the main registered trademark and registered various defensive trademarks during the years.

In 2012, claiming that the registered trademarks by Qiaodan Sports had, among others, infringed his name right, Michael Jordan filed requests with the Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry and Commerce for revoking the related trademarks registered by Qiaodan Sports. The TRAB found that as that Jordan is a common family name in Anglo-American world, it is difficult to identify the corresponding relationship between the family name Jordan and Michael Jordan as a matter of course, and thereby rejected Michael Jordan’s requests. Michael Jordan appealed.

Both the Beijing First Intermediate People’s Court and the Beijing High People’s Court upheld the TRAB’s decisions. Michael Jordan requested retrial of 68 cases with the Supreme People’s Court. In December 2015, the Supreme People’s Court issued certiorari to 10 cases by finding that Beijing High People’s Court missed one of appeal causes asserting that the registered trademarks violate Michael’s name rights and don’t comply with Article 31 of the Chinese Trademark Law (2001).

In the morning of April 26th, 2016, the Supreme People’s Court of the P.R.C. heard the cases jointly.

The point in dispute during the oral hearing of the retrial is whether the registration of the trademarks violate Michael Jordan’s name rights. The attorneys of Michael Jordan asserted that, the Chinese transliteration “Qiaodan” of Jordan and the corresponding Pinyin are identifiers of Michael Jordan, as Jordan enjoys extremely high reputation in China, marketing of commodities under the trademarks for “Qiaodan” will absolutely be regarded as authorized by Michael Jordan himself, and thus infringes the relevant rights and interests of Michael Jordan. The TRAB argued that Michael Jordan shall be barred from enforcing his rights due to laches upon requesting revocation after 12 years of registration of the trademarks in dispute and the asserted high reputation of “Qiaodan” is created by Qiaodan Sports rather than by Michael Jordan.

The panel didn’t announce their decisions after the oral hearing but suggested that, in light of the limited trial time, each side may submit written opinions within seven working days of the oral hearing. It is expected that decisions will be made by the Supreme Court very soon.

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