10 August, 2015
In June 2015, the Beijing Higher People's Court rejected a lawsuit brought by Michael Jordan to invalidate the registration of various trade marks owned by the Chinese company Qiaodan Sporting Goods Inc. (Qiaodan). The administrative action concerns 78 trade marks involving the mark 乔丹 (Qiao Dan, in Chinese Pinyin), brought by Michael Jordan and Nike against Qiaodan.
When basketball began to become popular in China, Michael Jordan registered his English name as a trade mark in China but did not register any Chinese transliteration or Chinese version. Later, a Chinese company began selling basketball merchandise under the brand name 'Qioadan' (乔丹), which it then registered as a trade mark. The mark, pronounced 'chee-ow dahn' is the transliteration of 'Jordan', and is now regarded as a well-known Chinese brand.
The case concerns whether or not 乔丹 is exclusively associated with 迈克尔•乔丹 (Michael Jordan, in official Chinese translation). Michael Jordan initiated administrative action against the China Trademark Review and Adjudication Board (TRAB). At first instance the Beijing Intermediate People's Court ruled that 乔丹 is a common American surname, and can refer to individuals using the name as either a first name or a second name. Therefore, the Court did not consider that Qiaodan’s use and registration of 乔丹 as a trade mark was an infringement of Michael Jordan’s right to his name, nor did it constitute an act of unfair competition. The First Instance Court decided 68 cases in favour of Qiaodan.
The Chinese Trade Mark Law allows for a first to register, as opposed to a first to use system, and so it is not illegal to register the Chinese transliteration of an overseas mark. Problems can be encountered, as in the present case, when the original owner needs to take action against the TRAB to invalidate the Chinese entity's transliterated marks. In the present case it appears that Michael Jordan waited too long before taking action against Qiaodan, which resulted in the Chinese company successfully using the marks for over 10 years. During this period, Qiaodan was able to develop and establish a significant reputation in the market. There are several key lessons to be learned for companies doing, or intending to do, business in China. Firstly, it is imperative to register trade marks in China as soon as possible. Secondly, expert advice should be sought as to the appropriate Chinese transliteration and Chinese versions of the English name. Finally, both the English and Chinese versions of the marks should be registered.
For further information, please contact:
Rieko Michishita, Partner, Bird & Bird
rieko.michishita@twobirds.com
