The trademark administrative dispute lasting several years between American basketball star Michael Jordan and Qiaodan Sports Co., Ltd. is the classic precedent on name rights protected as prior rights against trademarks. On retrial, the Supreme People's Court vacated the first- and second-instance judgments and the challenged ruling, and clarified the three-part test for protecting foreign natural persons' name rights; the case was designated Guiding Case No. 113 of the Supreme People's Court.
Case Overview
Around 2000, Qiaodan Sports applied for and obtained registration of trademark No. 6020569 'Jordan' (Class 28, covering basketballs and other goods). Michael Jordan, a U.S. citizen, believed the trademark harmed his name right and applied to the former TRAB under the State Administration for Industry and Commerce for cancellation of the disputed trademark; after the application was rejected by ruling, he filed an administrative lawsuit. He lost at both first and second instance and applied to the Supreme People's Court for retrial.
Issues in Dispute
- Whether a name right can be protected as a 'prior right' under the Trademark Law;
- Where a foreign natural person asserts only the Chinese transliteration, whether the Chinese '乔丹' (Jordan) constitutes his name;
- Whether registration of the disputed trademarks harmed Michael Jordan's prior name right.
Judgments and Case Numbers
- First instance: Beijing First Intermediate People's Court, (2014) Yi Zhong Xing (Zhi) Chu Zi No. 9163, judgment dismissing the claims on April 1, 2015;
- Second instance: Beijing Higher People's Court, (2015) Gao Xing (Zhi) Zhong Zi No. 1915, judgment affirming on August 17, 2015;
- Retrial: Supreme People's Court, (2016) Zui Gao Fa Xing Zai No. 27, publicly announced on December 7, 2016. The Supreme People's Court vacated the first- and second-instance judgments and TRAB ruling No. 052058 of 2014, and ordered the TRAB to issue a new ruling on the disputed trademark;
- Ten cases announced in the same batch: in the three 'Jordan' trademark cases ((2016) Zui Gao Fa Xing Zai Nos. 15, 26, and 27), the Supreme People's Court vacated the challenged rulings; in the seven pinyin 'QIAODAN'/'qiaodan' trademark cases ((2016) Zui Gao Fa Xing Zai Nos. 20, 25, 28, 29, 30, 31, and 32), the Court held that the relevant public had not established a stable correspondence between the pinyin and Michael Jordan, and rejected his requests;
- The case was designated Guiding Case No. 113 of the Supreme People's Court (released December 24, 2019);
- Sources: Guiding Case No. 113 page on the Supreme People's Court official website; People's Court Daily report ('Supreme Court publicly announces ten cases in the Jordan trademark administrative disputes').
Key Takeaways
In its judgment, the Supreme People's Court set out three conditions for name-right protection: first, the name enjoys a certain degree of recognition among the relevant public; second, the relevant public uses the name to refer to the natural person; and third, a stable correspondence has been established between the name and the natural person. The Court further noted that whether a particular name can be the object of name-right protection should be assessed on whether the name suffices to make the relevant public associate it with a specific natural person; using 'Jordan' as a trademark would easily lead the relevant public to believe that the marked goods had a specific connection such as endorsement or licensing with that natural person, thereby harming his name right.
Lessons for Businesses
Registering trademarks that ride on a celebrity's name or transliteration carries extremely high risk; even switching to pinyin does not help where a stable correspondence with the celebrity has been established among the relevant public. The reason the pinyin trademarks were upheld in this case was precisely that no such stable correspondence had been formed—it cannot be inferred that a pinyin strategy is safe. A party asserting a prior name right must fully prove recognition and correspondence, such as media reports and market surveys; for registered squatting trademarks, invalidation may be sought under the prior-rights provision of the Trademark Law, and parties dissatisfied with the ruling may seek relief through administrative litigation.
For the specific procedures above, you may book an invalidation filing on MyTMBee, and a filed trademark agent will provide full assistance.