Michael Jordan v Qiaodan Sports: How a Basketball Star Won Back His Chinese Name

By Imaduddin

Photo: u_ntrcp32xc7 / Pixabay

In China, Michael Jordan is widely known by the Chinese characters 乔丹, read "Qiaodan". A Fujian sportswear company, Qiaodan Sports, built a large business around marks that used those same characters and their pinyin spelling. Jordan challenged them, and in December 2016 China's Supreme People's Court handed down a ruling that is still taught as a leading case on personal names and trademarks.

A long road through the courts

According to the Supreme People's Court's English-language news service, Jordan began legal action in 2012, asking the trademark authorities to cancel Qiaodan Sports' registrations. The Trademark Review and Adjudication Board refused, and Beijing courts at two levels upheld that view in 2014 and 2015, finding that "Qiaodan" is the Chinese version of a common surname and did not necessarily refer to the basketball player.

Jordan then asked the Supreme People's Court to review the cases. The court took ten of them for retrial and, on 8 December 2016, announced its judgments in a public hearing led by Vice President Tao Kaiyuan.

Split result: characters versus pinyin

In three cases concerning the Chinese-character mark 乔丹, the court held that registration harmed Jordan's prior right in his name, which the Trademark Law protects as an existing prior right. It quashed the earlier decisions and ordered the Board to decide again. In the court's view, the Chinese public commonly used 乔丹 to refer to Jordan, and the company had registered the mark knowing this, without his permission. The court said the company's later commercial success could not cure that bad faith.

In seven cases concerning the pinyin marks "QIAODAN" and "qiaodan", Jordan lost. The court found that he had no name right in the pinyin form, so those registrations stood.

A guiding case

The Supreme People's Court later published the decision as Guiding Case No. 113. Its key points set out three conditions for a foreign person to protect a Chinese version of their name: the name must be known to the relevant Chinese public, the public must use it to refer to that person, and it must have a stable link to that person. The person does not need to have used the name commercially in China.

The Indonesian angle

Indonesia's trademark law has a direct rule on this issue. Under Article 21(2)(a) of Law No. 20 of 2016 on Marks and Geographical Indications, an application must be refused if it is or resembles the name of a famous person, unless that person has given written consent. Celebrities, athletes and their licensing companies should still monitor local-language and transliterated versions of their names, because examiners may not always spot the link.

Sources

• Supreme People's Court of China (English), "Highest court hands Jordan partial victory" (9 December 2016)
• Supreme People's Court of China, announcement of judgments in the ten "Qiaodan" trademark cases (9 December 2016, in Chinese)
• Supreme People's Court of China, Guiding Case No. 113 (14 January 2020, in Chinese)
• WIPO Lex, Michael Jeffrey Jordan v. Trademark Review and Adjudication Board and Qiaodan Sports Co., Ltd. (2016)
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)