The highest court in China, the Supreme People’s Court, has dismissed the trade mark infringement case brought by US basketball superstar Michael Jordan against Qiaodan Sports Co (“Qiaodan”), a Chinese athletic apparel company.
In 1993, the former Chicago Bull player registered a trade mark for the word “Jordan” in China. In 1998, Qiaodan registered in China the terms “Qiaodan” (pronounced ‘chee-ow-dahn’, which is the transliteration of ‘Jordan’), “乔丹”, the Chinese character translation of ‘Jordan’, and the number ‘23’ – Jordan’s former jersey number.
Jordan also accused Qiaodan for use of the silhouette of a leaping basketball player on their products which he claimed resembled the “Jumpman” logo used by US sporting goods giant Nike to promote its Air Jordan brand.Jordan alleged that Qiaodan had misled consumers about its tie with him as he is known in China as “Qiaodan”.
The dispute began in 2012, when Jordan had applied to Chinese authorities to have Qiaodan’s multiple trade marks removed from the register. Two lower courts dismissed Jordan’s application and ruled in favour of Qiaodan. Jordan then appealed to China’s highest court, the Supreme People’s Court. However, Jordan also failed in his final appeal.
The appeal was dismissed on two grounds. Firstly, that there was insufficient evidence to conclude that Qiaodan’s trade marks were determinedly referring to Michael Jordan. The name ‘Jordan’ is not only an ordinary last name of American people but also not the full name of the six-time NBA champion. Furthermore, the logo of the disputed trade mark – a silhouette of a basketball player, does not clearly reflect the major appearances of the player. This makes it difficult for the common public to associate the image with Jordan.
Secondly, Qiaodan is a family owned business that has around 6,000 retail outlets and is a sponsor of major sporting events, in China. It has therefore established itself as a highly regarded brand with a significant reputation amongst the Chinese people. As a result, the common public was held to relate Qiaodan to the athletic clothing company rather than the NBA star.
The legal tussle does not end there. In 2013, Qiaodan had filed a countersuit in Quanzhou City Intermediate People’s Court in Fujian, claiming that Jordan had tarnished the retailer’s reputation in China and delayed its plans for public listing in Shanghai. Qiaodan had been unable to pursue its intention for an Initial Public Offer (IPO) due to the negative perceptions of the company formed by the legal battle. This case is still ongoing.
One point to note from this dispute is the difference in trade mark registration between both countries. Chinese law grants trade marks to whomever who files for it first. Conversely, United States law grants trade marks to whomever who uses it first. Hence, Qiaodan had secured its trade marks by registering it before Jordan did, in China. Jordan’s case seemed to be weakened by the fact that he commenced proceedings more than 10 years after Qiaodan had successfully registered and used the marks. This period allowed Qiaodan to build up a well-known name and repute amongst the Chinese people.
Contributed by Karishma Rai, an intern with The IP Academy.