Trademark blues for Michael Jordan

What do Michael Jordan and ‘Qiaodan’ have in common? Confused?

Recently the Beijing Higher People’s Court (hereinafter the Court), China gave a judgment against the legendary basketball player, Michael Jordan. History of the same can be traced to 2012, when he filed a suit against a Chinese Company, Qiaodan Sports Co. Ltd. for using his English name’s Mandarin transliteration, ‘Qiaodan’ (pronounced as chee-ow-dahn), his jersey number, 23, and a silhouette similar to that of ‘Jumpman’ used by Nike for its ‘Air Jordan’ products, among other impugned trademarks. The Chinese Company has even filed trademark applications for marks consisting of Mandarin transliteration of Michael Jordan’s sons’ names.[1]Jordan claims that the impugned trademarks are used to increase the visibility of goods as well as create an impression in the minds of customers that these goods are endorsed by him.

China follows ‘first to file’ principle, meaning that the person who first registers his mark will own the rights to the said mark and in most cases have priority over prior user of the mark.[2] Since China does not provide common law protection for unregistered trademarks, protection for the same is minimal, the only exception being in the case of well-known marks and those having certain influence.

Michael Jordan is one of the most famous names in the field of sports. A few decades back, he got his English name registered as a trademark in China. However he ignored to take steps to register the Mandarin transliteration of his name. Taking advantage of this ignorance, Qiaodan Sports Co. Ltd. started using the impugned marks, and subsequently got the Mandarin transliteration of ‘Jordan’ along with the other impugned trademarks, registered.The Chinese company had been using the impugned trademarks for 10 years prior to the filing of a trademark invalidation action, allowing them to develop a reputation in China.

In what is another instance of China’s perplexing Trademark Law, the Court in the present case has held that ‘Qiaodan’ is not the only name corresponding to ‘Jordan’. As per the Court, it is only an ordinary surname of American people, not a full name. Apparently, since the plaintiff ‘failed’ to put forward any evidence, it could not be assumed that that ‘Qiaodan’ pointed to Michael Jordan. The court held that the public associated the impugned mark ‘Qiaodan’ with the Chinese Company and not with Michael Jordan. As far as the silhouette is concerned, the court held that it does not specifically point towards Michael Jordan. It is only a shadowy figure, which does not clearly reflect the major appearances of the figure.[3]

This incident highlights a very important issue i.e. the lax attitude shown towards intellectual property infringement by Chinese authorities. The laws prevailing in China provide a safe haven for infringers, thereby depriving foreign entities of millions. The decision also serves as an important reminder of the need to take pro-active action against infringers. The fact that Michael Jordan waited for a decade before filing a trademark invalidation action, definitely played a role in him losing this trademark battle.

While Michael Jordon may have failed in getting the impugned trademarks deregistered, all is not lost;the negative publicity generated by the action, disclosing Qiaodan Sports Co. Ltd. as having absolutely no association with Michael Jordan, will surely affect its future prospects.