19 December, 2016
The Supreme People’s Court has just ruled on 8 December 2016, that Michael Jordan owns the rights to his last name in Chinese characters, overturning the earlier decisions against the famous former basketball star in a long-running trademark dispute in China.
Back in 2012, Jordan sued a Chinese sportswear company “Qiaodan Sports”, which sells basketball jerseys and shoes using Jordan’s Chinese last name “乔丹 [Qiaodan]”, “Qiaodan” and his jersey number “23”. Jordan asked for the relevant trademark registrations of the Chinese company to be removed from the Trademark Office of the State
Administration for Industry and Commerce of the People’s Republic of China, claiming that they misled Chinese consumers to believe he was behind the brand, and that they had damaged the legal rights to his name.
The lower courts ruled in favour of the Chinese company in not accepting Jordan’s argument that the Chinese company’s use of Jordan’s Chinese name would associate Jordan with the brand. Jordan appealed against these earlier rulings.
The Supreme People’s Court has ruled that Jordan’s Chinese last name is “well recognized” within the country and, as such, he should have the legal right to it. It further directed that the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce of the People’s Republic of China is to issue a new ruling with regards to the Chinese company’s relevant trademark registrations of the Chinese characters of Jordan’s last name “乔丹 [Qiaodan]”. However, the same ruling upheld the Chinese company’s right to use the Chinese pinyin version of Jordan’s last name “Qiaodan” of which Jordan enjoys no rights, because the pinyin version is not widely known by the public in China as reference to the basketball star and no stable connection between the same has been established.
Given that famous foreign brands, such as New Balance, often end on the losing side in trademark disputes in China, this ruling is welcome news for famous foreign celebrities and brand owners seeking to protect their intellectual property rights in China. The ruling also shows China’s determination in the respect and protection of foreigners’ name rights (although only with regards to Chinese transliteration presented in Chinese characters, but not the pinyin version), and should have a positive effect to deter trademark squatters.
For further information, please contact:
Jonathan Chu , Partner, Stephenson Harwood
Jonathan.Chu@shlegal.com
