China Trademarks: Michael Jordan Emerges Victorious (Sort of)

The Supreme People’s Court of China just gave Michael Jordan a partial victory in his long-running trademark battle with Qiaodan Sports. As I wrote last year, Jordan has been trying for years to cancel trademarks he alleges Qiaodan Sports registered in bad faith, including the marks “乔丹” (the Chinese-language version of “Jordan”) and “Qiaodan” (the pinyin version of 乔丹). Previously, Jordan has lost at every step of the way; the Trademark Review and Adjudication Board and various Chinese courts have all rejected Jordan’s argument that “乔丹” was already well-known and associated with him personally at the time Qiaodan Sports filed its trademarks.

But the highest court in China today ruled that “乔丹” was well-known and associated with Michael Jordan personally, and that therefore Qiaodan Sports’ trademark registrations for “乔丹” should be invalidated. I have not seen the decision yet, but from what has been reported in the Chinese media, the decision does not include any rationale; it just announces the outcome, leaving us to draw our own conclusions.

It is tempting to see this decision as a harbinger of better times for foreign companies seeking to protect their brand in China. But I would be cautious about taking that view, for several reasons.

First, this decision was for trademarks that were associated with a person’s name. For some time now, Chinese courts have been more likely to protect a trademark that is a person’s name (versus a random company name). Even a few years ago, Jordan would have had no trouble invalidating a trademark squatter’s application for “Michael Jordan.”

Second, Jordan only won a partial victory. Though the court found “乔丹” was well known and associated with Michael Jordan, it also found “Qiaodan” was not. It’s difficult to rationalize the distinction. Presumably the court determined that Jordan is too common a name to register as a trademark and “Qiaodan” is the standard pinyin transliteration for that name, and/or any number of Chinese characters could be put together to form “Qiaodan” and therefore the connection was too tenuous. But these arguments are rather flimsy. If you look in a Chinese dictionary, the only word the pinyin “Qiaodan” resolves to is “乔丹,” which has a single meaning: the name “Jordan.” Why grant protection to “乔丹” but not “Qiaodan”?

Third, though the court accepted the argument that “乔丹” was well known and associated with Michael Jordan, it rejected the argument that Qiaodan’s registrations were “detrimental to socialist morals or customs, or having other unhealthy influences” or acquired by “improper means.”

Fourth, this decision is anomalous under current China trademark practice. The vast majority of Chinese trademark decisions are still coming out in favor of trademark squatters, and it is almost impossible to prove that a mark filed by a trademark squatter was well-known in China at the time of the application. It’s hard not to share the cynical view that something else is going on below the surface here. But maybe it’s as simple as that the case was heard in front of a sympathetic chief judge.

The Supreme People’s Court’s decision is final and cannot be appealed further. So though Qiaodan Sports can no longer use “乔丹” on its goods, it cafn continue using “Qiaodan” for as long as it wants, without threat of further interference. Jordan may be claiming victory in the press, but he can’t be happy that Qiaodan Sports will get to use “his” name forever.

Because this decision was so unexpected, the immediate consequence is to introduce even more uncertainty to China’s trademark registration process. Probably many more owners of allegedly “well-known” marks will be encouraged to begin invalidation proceedings in China. I can’t say I blame them, but it’s not much of a strategy. The only realistic way to establish trademark rights in China is to file a trademark application in China.