According to the Shanghai Xinhua News Agency, the Shanghai Second Intermediate People’s Court handed down a first instance decision on 30 December 2020 in favour of Michael Jordan against Qiaodan Sports Company and Bairen Trading Company (both Chinese local companies) in respect of infringement of Michael Jordan’s name rights.
In the lawsuit, Michael Jordan claimed that the Chinese name “乔丹” (the transliteration of “Jordan” in Chinese) is well-known to the Chinese public to be specifically connected to himself therefore he should enjoy the name right under Chinese law. Qiaodan Sports used Michael Jordan’s Chinese name “乔丹” in its trade name, products and advertisement without Michael Jordan’s permission, which he claimed misled consumers and constituted an infringement of his name rights. Michael Jordan also alleged that Bairen Trading Company, which sold the infringing products of Qiaodan Sports, should also be jointly liable.
The Court agreed and found that Qiaodan Sports did deliberately pick the Chinese name “乔丹” for its trade mark application and company name registration, knowing that Michael Jordan has a relatively high reputation in China. Qiaodan Sports had also registered Michael Jordan’s former jersey number “23” and the Chinese transliteration of the name of his two sons, namely “马库斯·乔丹” (Marcus Jordan) and “杰弗里·乔丹” (Jeffrey Jordan) as trademarks. The malicious intent to cause confusion was so obvious that it constituted infringement of Michael Jordan’s name rights. The Court did not find joint liability against Bairen Trading as the seller, but did rule that Bairen should not sell such infringing products in the future.
The Court held that Qiaodan Sports should:-
- publicly apologize to Michael Jordan in the newspaper and on the Internet, and clarify that Qiaodan Sports has no connection with Michael Jordan;
- stop using “乔丹” as its trade name;
- stop using the relevant “乔丹” trademarks: for those “乔丹” trade marks for which the five-year invalidation period has expired, Qiaodan Sports is required to implement reasonable ways to indicate that it is not associated with Michael Jordan in any way, e.g. by including distinctive signs, etc.;
- compensate Michael Jordan in the sum of RMB300,000 for “emotional distress” and RMB50,000 for reasonable Court expenses (Michael Jordan did not claim actual economic losses)
As discussed in our earlier article (please refer to https://www.thebrandprotectionblog.com/new-balance-lands-a-win-in-china/), the Supreme People’s Court had already ruled in favour of Michael Jordan earlier in another case against Qiaodan Sports, in December 2019, and held that Qiaodan Sports had maliciously registered “乔丹” as a trade mark, thereby violating Michael Jordan’s name rights and the principle of good faith. Indeed, the series of disputes against Qiaodan Sports has stretched over many years when considering that Qiaodan Sports was established in 2000 and has for all that time been using the domain <qiaodan.com>. According to media reports, Nike started filing trademark oppositions and invalidations against the “Qiaodan” series of trademarks registered by Qiaodan Sports back in 2012. After they lost all those cases, lawsuits were then initiated in the name of Michael Jordan himself, based on his name rights, which ultimately led them to victory.
Although the monetary compensation in this case may not be so huge, which might deter would-be squatters from pre-emptively registering famous foreign brands, both the Shanghai Second Intermediate People’s Court in this case, as well as the Supreme People’s Court in the earlier case, specifically found bad faith or malicious intent on the part of Qiaodan Sports, which is a very public indictment to make about a company which has already been in business for over 20 years. It is hoped to be seen that the Chinese authorities will continue to rule in favour of foreign originated brands in similar circumstances, based on such principles of good faith, so as to discourage blatant trade mark piracy.