Jordan vs QiaoDan: last chapter of the epic battle

On Dec. 30, 2020 it has been handed down another decision of the epic legal battle between the former NBA super star Michael Jordan (“Jordan”) and Qiaodan Sports Co. Ltd., (“Qiaodan Sports”), a Chinese sportswear and shoes manufacturer.

The Shanghai No. 2 Intermediate People's Court ordered Qiaodan Sports to stop using "乔丹" in its trade name and trademarks, except for those trademarks which were registered more than five years and not available to be invalidated according to Chinese Trademark Law. Qiaodan Sports should take reasonable measures to clarify that these trademarks have no connection with NBA star Michael Jordan. Qiaodan Sports was also ordered to make a formal apology on newspapers and online. [(2012) Hu Er Zhong Min Yi (Min) Chu Zi No. 1]

This case represents the comprehensive consideration of Article 2 & 15 of Tort Liability Law and legislative purpose of Trademark Law which imposes to the owner and user of a trademark to take reasonable means not to make confusion with other’s name right, in order to achieve the purpose of stop name right infringement.

Case Background

The infringement dispute was initiated by Michael Jordan on March 1, 2012 and was suspended for several years due to pending disputes on the trademark "乔丹" (“QiaoDan”). Concluded such disputes with the decisions issued by the Supreme Court, the infringement case was resumed.

The plaintiff, Michael Jordan, claimed that since 1984, Chinese media had conducted news reports by using Mandarin transliteration "乔丹" to refer to the plaintiff. Therefore, such transliteration had established specific connection to Michael Jordan and been well-known to the Chinese public, thus the plaintiff shall enjoy name right on "乔丹" (“QiaoDan”).

The defendant - Qiaodan Sports - argued that Jordan is a normal surname in foreign countries and the plaintiff couldn’t enjoy name right on it. It also argued they had registered and used trademark "乔丹" for decades, and the plaintiff had known the existence of Qiaodan Sports, but failed to claim the rights in time, thus the statute of limitations had long passed. Bairen Trading argued the products sold by them were purchased through legal channels, so it had fulfilled its reasonable duty of care and did not constitute joint infringement.

As briefly mentioned above, the Shanghai Court took position on the side of Michael Jordan highlighting that:

1. Knowing Michael Jordan’s high reputation, Qiaodan Sports still trademarked“乔丹” and registered the same as its trade name.

2. Qiaodan Sports also trademarked Michael Jordan’s NBA jersey number "23" and Mandarin transliteration of his two sons Marcus Jordan and Geoffrey Jordan, the intention of which were very obvious.

Above all, it was sufficient to determine that Qiandan Sports had intention to cause confusions or allow the public to confuse. Therefore, it constituted an infringement on plaintiff’s name right.

However, the verdict it is not fully in favor of the former NBA star. It is worth highlighting why it doesn’t order Qiaodan Sports to completely stop using trademarks "乔丹", but give compromise to the ones registered more than 5 years.

According to the current Chinese Trademark Law[i], a registered mark can be invalidated on relative grounds within 5 years from its registration date. The said relative grounds include similarity to prior registered or unregistered trademarks, violation against prior rights, imitation/copy/translation on well-known trademarks (similar class or cross-class), unauthorized registration based on business relationship, etc. Only when there is a claim of well-known status+ bad faith the 5-year limitation can be overridden.

To understand the present decision, we shall shade some lights on the previous administrative disputes, where the Supreme Court (“SPC”) called to determine if “乔丹” “QiaoDan" trademark shall be invalidated or not took the position to invalidated only the trademarks registered for less that 5 years. The SPC refused multiple retrials applied by Michael Jordan where the disputed trademarks were all registered more than 5 years.

If the Shanghai No.2 Intermediate People's ordered to stop using trademarks “乔丹” registered more than 5 years in the captioned name right dispute, it will conflict with the context of Chinese trademark law.

As explained by the Court on its official Weibo, the purpose to register and use trademark “乔丹” is to make the public associate to NBA star, thus benefits from this kind of association. Therefore, under the premise that some trademarks “乔丹”  are irrevocable, the defendant is ordered to eliminate the direction to Michael Jordan by reasonable means, in order to block the association generated.

The judgment has not taken effect yet, which means both parties can still appeal. The final reasonable means provided by Qiaodan Sports need to be reviewed by the Court once the judgment took effect.

As of the publication of this article, Qiaodan Sports has already changed its trade name as "中乔体育 (Zhong Qiao Sports)". This new trade name has no literal direction to Michael Jordan, but seemingly might still imply “China Jordan” in terms of the meaning. 

The captioned case is the latest judgment between Michael Jordan and Qiaodan Sports, the battle of which lasts for more than 20 years. This ruling is basically consistent with a previous verdict from the SPC.

Among the previous administrative disputes, the SPC had already confirmed trademark "乔丹" infringed Michael Jordan's name rights. [(2016) Zui Gao Fa Xing Zai No.15/26/27] 

However, the SPC determined that trademark of Pinyin "QIAODAN" did not infringe Michael Jordan's name rights. [(2016) Zui Gao Fa Xing Zai No.20/25/28/29/30/31/32]

Last year, the SPC issued a new judgement, of which Michael Jordan had confirmed to enjoy the name right of "乔丹" again, thus the trademark No. 6020578 was invalidated accordingly. But the judgment stated Michael Jordan cannot enjoy portrait right with respect to the logo. [(2018)Zui Gao Fa Xing Zai No. 32]

It’s interesting that according to the online trademark database, on December 31, 2020 and November 13 2020, Qiaodan Sports applied for a large number of new trademark applications as refer to the below screenshot.

The screenshot of trademark specimen

It seems that Qiaodan Sports still doesn’t surrender after a long-term battle with Michael Jordan. The subject case will probably be appealed by Qiaodan Sports. However, at least the famous NBA star is gradually winning back his right.

[i] Article 45 Where a registered trademark stands in violation of the provisions of Paragraphs 2 and 3 of Article 13, Article 15, Paragraph 1 of Article 16, Article 30, Article 31 and Article 32 hereof, the prior right owner or interested party may, within five years upon the registration date of such trademark, apply to the Trademark Review and Adjudication Board for nullifying the same. In the event of malicious registration, owners of well-known trademark may exempt from the aforesaid five-year duration. 

Article 44 The Trademark Office shall annull the registered trademark if it violates the provisions of Articles 4, 10, 11,12 or paragraph 4 of Article 19 of the Law, or it was acquired by fraud or any other improper means. Other units or individuals may request the Trademark Review and Adjudication Board for a ruling to annul such a registered trademark.