On 8 December 2016, the Supreme People’s Court of the People’s Republic of China (“SPC”) issued ten decisions in Michael Jeffrey Jordan v Trademark Review and Adjudication Board, three of which were in favour of Michael Jordan. Apart from recognising the former NBA superstar’s personal rights in “喬丹 (Qiao Dan in Chinese)” (these are the Chinese characters recognised as corresponding to Michael Jordan’s surname), the SPC also clarified the proper approach in safeguarding personal name rights under PRC trademark law.
Although Nike had obtained registration of the “JORDAN” mark in China back in the 1990s, Nike and Michael Jordan did not file applications for the corresponding Chinese characters “喬丹 (Qiao Dan in Chinese)”. A local PRC company known as Qiaodan Sports Co., Ltd. (“Qiaodan Sports”) started operations in 2000 and registered a large number of “喬丹 (Qiao Dan in Chinese)”, “QIAODAN” and device marks while expanding its business operations across China.
In 2012, Michael Jordan applied to the Trademark Review and Adjudication Board (“TRAB”) to cancel various marks owned by Qiaodan Sports. In the ten cancellation applications, Michael Jordan argued, amongst other things, that the registration of the marks infringed his personal name rights. In 2014, TRAB rejected the cancellation applications. After a series of unsuccessful court appeals, Michael Jordan filed petitions for retrial of these ten cases before the SPC.
The SPC made two sets of rulings:
(1) In respect of three “喬丹 (Qiao Dan in Chinese)” marks (Registration Nos. 4152827, 6020565 and 6020569) (Case Nos. 15, 26 and 27), the SPC held that the registration of these marks infringed Michael Jordan’s personal name rights in violation of Art. 31 of the 2001 Trademark Law, and it ruled that the marks should be cancelled. The SPC ordered the TRAB to reissue decisions in these cases.
(2) In respect of seven other marks containing the English transliteration of “喬丹 (Qiao Dan in Chinese)” (ie, “QIAODAN” (Registration Nos. 6020568, 6020575, 6020571 and 6020566),
“ ” (Registration No. 9286585),
“ ” (Registration No. 9292836)
and “ ” (Registration No.9292824) (Case Nos. 20, 25, 28, 29, 30, 31 and 32)), the SPC held that the registration of these marks did not infringe Michael Jordan’s personal name rights, and the petitions for retrial were dismissed.
This article focuses on the three favourable rulings (Case Nos. 15, 26 and 27) and discusses how the SPC’s approach towards personal name rights differed from the approach of the lower courts.
Intermediate and Higher People’s Court Decisions
Article 31 of the 2001 Trademark Law provides that “… an application for the registration of a trademark may not prejudice the existing right of priority of any third party…”.
The Beijing No. 1 Intermediate People’s Court (“Intermediate Court”) held in Case Nos. 15, 26 and 27 that “喬丹 (Qiao Dan in Chinese)” was a common foreign surname, and that there was insufficient evidence to prove that the mark refers to Michael Jordan. In other words, while not denying that “喬丹 (Qiao Dan in Chinese)” was a counterpart for “JORDAN”, the Intermediate Court did question whether those characters necessarily referred to Michael Jordan’s name and whether Michael Jordan could therefore claim prior rights in those characters based on his personal name rights. The Intermediate Court also observed that both Michael Jordan and Qiaodan Sports had formed different customer bases in the market and maintained a stable relationship as business competitors. Based on these observations, the Intermediate Court upheld the TRAB’s decisions.
The Beijing Higher People’s Court also upheld the Intermediate Court’s decisions on appeal.
The SPC Judgments
As noted above, the SPC took a different approach in ascertaining the scope of protection of Michael Jordan’s personal name rights.
Prior Right Includes Right to One’s Name
The SPC considered whether it is necessary for consumers to exclusively associate a trademark with the owner of associated personal name rights: specifically, whether personal name rights could be recognised and enforced, even though the “喬丹 (Qiao Dan in Chinese)” mark might be referring to other persons with the surname “JORDAN” and not just the plaintiff Michael Jordan.
The SPC recognised the difficulty in assessing the extent to which a person’s name should be protected by law, and it ruled as follows:
(1) A natural person enjoys personal name rights, and is entitled to choose and change his or her name. However, such person may not prohibit another person from legally adopting the same name in good faith.
(2) As multiple persons may have the same name, it is difficult for a natural person to establish an exclusive corresponding relationship (唯一對應關係) to that name.
(3) Further, a natural person may also have other names (such as a stage name, pen name or alias), and the fame of these other names may be greater than the natural persons’ actual name in certain circumstances.
(4) The test that a natural person must prove that he or she has an exclusive corresponding relationship with his or her name is unnecessarily harsh. If this test is adopted, then the personal name rights of other persons’ with the same name or the rights of persons with other names (such as a stage name or alias) cannot be given any protection.
(5) As such, even though a name may not correspond solely to a single natural person, it is sufficient that there is a stable corresponding relationship (穩定的對應關係) between the two. There are three conditions, namely: (i) that the name in question should enjoy a certain degree of fame in China and be known to the relevant public; (ii) that the relevant public identifies that natural person through the name; and (iii) that the natural person has established a stable corresponding relationship with the name.
The implication of the SPC’s ruling is that no one can establish that he or she has exclusive rights in a personal name, or in other words, that he or she is the only person entitled to seek protection of the name. Provided that the requirements of the abovementioned test are fulfilled, however, a common name (such as “JORDAN”) can be protected under the law even though there may be other persons with the same name.
Analysis of the Present Case
Applying the above test, the SPC held that “喬丹 (Qiao Dan in Chinese)” enjoys a rather high degree of fame in China and it is known to the relevant public: the public uses “喬丹 (Qiao Dan in Chinese)” to refer to Michael Jordan and “喬丹 (Qiao Dan in Chinese)” and the name “JORDAN” have a stable corresponding relationship.
In making its ruling, the SPC took into consideration the large amount of articles, books, magazines printed in China that had used “喬丹 (Qiao Dan in Chinese)” to refer to Michael Jordan. This evidence persuaded the SPC that the relevant public does indeed identify Michael Jordan by the name “喬丹 (Qiao Dan in Chinese)”.
The SPC also referred to a section entitled “Brand Risk” appearing in a prospectus prepared by Qiaodan Sports. In that prospectus, Qiaodan Sports included a warning to prospective investors that “… some consumers may associate the Issuer [Qiaodan Sports] and its products with Michael Jordan [邁克爾·喬丹], which may in turn lead to confusion or misunderstandings …”.
The SPC also gave considerable weight to two notarized consumer surveys covering Beijing, Shanghai, Guangzhou, Chengdu and Changshu, which showed that 85 percent and 63.5 percent of consumers associated “喬丹(Qiao Dan in Chinese)” with Michael Jordan. By contrast, only 14.5 percent and 24percent of consumers associated “喬丹 (Qiao Dan in Chinese)” with Qiaodan Sports. It is interesting to note that Qiaodan Sports also submitted a report conducted in June 2012, which found that only 7 percent of Qiaodan Sports’ consumers associated the “QIAODAN / 喬丹體育 (Qiao Dan Sports in Chinese)” brand with Michael Jordan, while 90percent of consumers thought that “喬丹體育 (Qiao Dan Sports in Chinese)” was a local brand unaffiliated to Michael Jordan. The SPC refused to take this report into consideration when making its ruling, as the report did not contain details on the methodology for the interviews or on the specific questions asked.
Although the SPC noted that “JORDAN” is a common foreign surname, it also recognised that the fame of such names in China is limited. In particular, it noted that there was no evidence to prove that the relevant public would associate “喬丹 (Qiao Dan in Chinese)” with any other person. The SPC also gave consideration to Qiaodan Sports’ admission during the first instance trial that apart from Michael Jordan and Qiaodan Sports, it was not aware of any other person enjoying such continuous influence and fame in China.
When making its ruling, the SPC also took account of Qiaodan Sports’ bad faith. It held that the evidence submitted proved that Qiaodan Sports was aware of the high degree of fame of Michael Jordan and its name “(Qiao Dan in Chinese)” when it filed its various trademark applications.
For example, at different stages of the proceedings Qiaodan Sports gave conflicting explanations as to how it came up with the “ 喬丹 (Qiao Dan in Chinese)” mark. In 2012, Qiaodan Sports argued in a case before the Shanghai No. 2 Intermediate People’s Court that “ 喬丹 (Qiao Dan in Chinese)” meant “southern grass and wood (南方之草木)”. In a later hearing in October 2014, it told the Intermediate Court that the mark means “good intention; good will (美好的意思; 美好意愿)”. During the SPC hearings in 2015, it claimed that it had hired a local trademark firm to come up with the name in the mid-1990s. The SPC also noted that Qiaodan Sports and its affiliates had filed a large number of pirate applications for marks associated with Michael Jordan (eg, applications for marks containing the number “23”, applications for a silhouette of a basketball player resembling Michael Jordan and applications for the names of Jordan’s two children).
The SPC decisions may be helpful for foreign brand owners seeking protection of their personal name rights in China. The decisions provide much needed clarification by ruling that a person need not prove that he or she has an exclusive corresponding relationship to the name in question: it should be sufficient if the person asserting the rights can show the name has a certain degree of fame in China, that the Chinese public identifies the person through that name and that a “stable corresponding relationship” can be established between the person and the name. Of course, collecting sufficient evidence of fame will be key for the relevant brand owners, and in this regard the SPC’s acceptance of market survey evidence is also encouraging.