By Ms. Shumin He, Chofn IP
On December 30, 2020, Shanghai No. 2 Intermediate People’s Court made a first-instance judgment on the dispute over Michael Jeffrey Jordan's name right, unfavorable to the defendants Qiaodan Sports Co., Ltd. and Shanghai Bairen Trading Co., Ltd. This case has lasted for eight years and the judgment has attracted much attention and aroused hot discussion in the Chinese IP circle.
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Case brief
Qiaodan Sports Co., Ltd. (hereinafter referred to as “Qiaodan”) uses “乔丹 (the Chinese equivalent of Jordan)” as its trademarks and trade name without Michael Jeffrey Jordan’s authorization. Shanghai Bairen Trading Co., Ltd. sold products produced by Qiaodan, labeled with “乔丹 (the Chinese equivalent of JORDAN)”.
Michael Jeffrey Jordan deems that Qiaodan’s activities infringe his legitimate right to the personal name Michael Jeffrey Jordan, as the two characters have formed a stable correspondence with himself.
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Other facts
Qiaodan owns some trademarks relating to “乔丹 (the Chinese equivalent of JORDAN)”, which have been registered for more than five years.
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Key points of the Court judgment
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Qiaodan has infringed Michael Jeffrey Jordan’s personal name right;
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Qiaodan should stop using the two characters as its trade name;
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Qiaodan should stop using trademarks involving the two characters. However, for trademarks involving the two characters which have been registered for more than five years, Qiaodan may continue its use, provided that Qiaodan adopts certain reasonable measures to avoid potential confusion or prevent the public's misleading association between Qiaodan and Michael Jeffrey Jordan.
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Lessons from the case
Although Michael Jeffrey Jordan won the case in the first instance, the process is quite time- and resource-consuming. His attorneys claimed the legal expenses of USD150K+. Moreover, Qiaodan can conditionally continue using the two characters so long as it adopts certain reasonable measures to avoid confusion. We should learn at least the following important lessons:
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Register trademarks earlier:
As China adopts first-to-file principle, it is advisable to file trademarks as early as possible.
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Watch the trademark register and take actions earlier
As the China National IP Administration (CNIPA) cannot absolutely filter all squatted trademarks, it is highly advisable for the legitimate owners and users to watch the Chinese trademark register and duly file oppositions, invalidations, and/or even lawsuits against the squatted trademarks as early as possible.
In this case, if Michael Jeffrey Jordan had taken actions early and successfully prevented or invalidated Qiaodan’s registrations, Qiaodan should not have used the two characters as its trademark or trade name for so many years.
As this is just the first-instance judgment, the defendants remain entitled to appeal or even request for re-examination. Let’s wait and see the new developments.
Mike Jordan Stopped Infringing Trade Name Temporarily.pdf
