Interpretation of “QIAODAN” (in Chinese characters: 乔丹) Trademark Infringement Dispute

In China, trademark disputes of well-known foreign companies and celebrities are relatively common, especially the disputes of trademark registration applications infringing upon the existing prior rights of others. The “QIAODAN” (in Chinese characters: 乔丹) Trademark Infringement Dispute had lasted for four years and a favorable judgment was lately made on December 8^th, 2016. Similarly, the “TRUMP” Trademark Infringement Dispute of the U.S. President-elect Donald Trump had lasted for a decade and last month, there was a favourable turn of the trademark “TRUMP” registered on class 37 which was preliminarily approved and published.

Case background:

On February 23^rd, 2012, Michael Jordan filed an appeal against QIAODAN Sports Co., Ltd (hereinafter referred to as “QIAODAN Co.”) that the trademark “QIAODAN” (in Chinese characters) registered and used by QIAODAN Co. has infringed the right of personal name of Michael Jordan. However, Beijing First Intermediate People’s Court concluded that QIAODAN Co. has not infringed the right of personal name of Michael Jordan in the first instance after the Trademark Review and Adjudication Board of State Administration for Industry & Commerce of People’s Republic of China (hereinafter referred to as “TRAB”) and made the decision to maintain the trademark “QIAODAN” (in Chinese characters). On July 27^th, 2015, in second instance, Beijing Municipal Higher People’s Court ruled that the appeal was rejected and the decision was upheld as the grounds of appeal were insufficient and that the involved trademark of QIAODAN Co. shall be maintained.

Michael Jordan filed an application for retrial. On December 8^th, 2016, the Supreme People’s Court of the People’s Republic of China delivered a verdict that the trademark “QIAODAN” (in Chinese characters) has infringed upon the prior right of personal name of Michael Jordan and ordered TRAB to remake the decision. In regards to other cases involved “QIAODAN” (in Chinese pinyin), Michael Jordan does not enjoy the right of personal name, therefore the decision made in second instance shall be sustained and the retrial application shall be rejected.

Analysis:

“The prior rights” stipulated in the Article 32 of Trademark Law includes the right of personal name. The right of personal name is applicable to the regulation stipulated in General Principles of the Civil Law, “Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited.”

“QIAODAN” (in Chinese characters) is a partial translation of “Michael Jeffrey Jordan” while “QIAODAN” and “qiaodan” are the literal translation from “QIAODAN” (in Chinese characters) into Chinese pinyin. To determine whether the disputed trademark infringed the prior right of personal name in the retrial, it is considered that,(i) whether the name enjoys high popularity in China; (ii) whether the name could directly refer to the retrial applicant; (iii) whether there is a close correlation between the name and the retrial applicant. While the trademark “QIAODAN” (in Chinese characters) is cancelled and the judgment of “QIAODAN” and other related trademarks is sustained, we could make out the recognition among relevant public, the association between the retrial applicant and the Chinese characters and Chinese pinyin of involved trademarks, is the most important factor in judging the trademark’s popularity and correlation.

Furthermore, the close correlation does not indicate the exclusive correlation and it refers to whether the trademark usage may cause any confusion or misunderstanding among consumers instead. Although the retrial applicant has not used the trademark commercially, it is highly associated with his career which may cause confusion. On account of above mentioned grounds, it was ruled that “QIAODAN” (in Chinese characters) has infringed upon the prior right of personal name with the premise of affirming its popularity and relevance.

With regard to the retrial, both parties respected the Court’s ruling. QIAODAN Co. stated, three trademarks involved in the retrial application supported by the Court are defensive trademarks used on other goods and the trademark “QIAODAN” (in Chinese characters) judged to be cancelled is not a part of their core business. Though the retrial judgment is made, they still have to wait the TRAB to remake the decision. However, it would have an influence on the issue that how long it would take the involved products with trademark “QIAODAN” (in Chinese characters) to fade out the market.