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September - October 2016 Vol. 106 No. 5 Back to TMR Main Page
 
Understanding Michael Jordan v. Qiaodan: Historical Anomaly or Systemic Failure to Protect Chinese Consumers (English and Chinese Versions)
 
 
This article examines the intersection of trademarks and famous names with non-phonetic famous marks that evoke the phonetic names of international celebrities, and a detailed analysis of the Michael Jordan dispute in China is presented. The article is accompanied by a Chinese summary article that assumes familiarity with recent Chinese cultural history, and so focuses on the non-Chinese trends.

UPDATE: Since these articles were published, news outlets have reported that the dispute has been resolved. While news headlines may create the impression that the entire dispute was resolved in his favor, the reality is much more complex.

Of the 68 separate trademark invalidations Michael Jordan filed against registrations owned by Fujian Qiaodan Sports, Co., Ltd., the Supreme People’s Court of the P.R.C. granted three to Michael Jordan. So far he has lost his appeals in 57 of the cases. The status of the other eight is not known, but the People’s Court Daily reports that the cases are suspended for reasons that are not explained. All three appeals Michael Jordan won are related to the Chinese character mark,乔丹, pronounced qiaodan. The Court published the judgment in one of the three appeals, for 乔丹 in class 28 (Reg. No.: 6020569). It shows that the Supreme Court remanded the case to the Trademark Review and Appeal Board for a new review. Another published decision shows the Court expressly denied Michael Jordan’s appeal for the Pinyin version, QIAODAN in class 25 (Reg. No.: 6020575).

Read together, the two published decisions show that the Court recognizes the possibility that the two Chinese characters, used commonly to transliterate Michael Jordan’s name in Chinese sports reports, became famous, the fame is attributable to Michael Jordan, he should own prior rights in the famous name, and the fame of his name has priority over the trademark registration owned by the Fujian company since Apr. 26, 2007. However, the Court considers that the athlete does not have any right to claim the pinyin version as his famous name. This makes sense, as Chinese sports reports are made in Chinese, and pinyin transliterations are for the convenience of foreigners who cannot read Chinese.

Trademark professionals will readily discern the difficulty with blocking QIAODAN based solely upon MICHAEL JORDAN. Many US athletes have “Jordan” as part of their name, so it made sense for NIKE to register the athletes’ full names, rather than a common part of a name. Fujian Qiaodan Sports filed its first QIAODAN Chinese character registration in 1997 for swimwear, shoes, and raincoats (Reg. No. 1186599), but withdrew that registration in 2012. The Court did not review the registrations owned by the Chinese company as single body, but rather examined each registration on a case by case basis, enabling it to decide that Reg. No. 6020569, approved in 2007, was filed too late to avoid prior knowledge of the athlete’s fame.