On December 30, 2020, the Shanghai Second Intermediate People’s Court ruled in favor of Michael Jordan against Qiaodan Sports Co. (Qiaodan is the transliteration of Jordan into Chinese) (乔丹体育公司) over the use of Jordan’s Chinese name. The Court ruled that Qiadoan Sports Co. publicly apologize in newspapers and the Internet to clarify the relationship between the parties; stop using Qiaodan its in corporate name; stop using Qiaodan trademarks except for those that exceed the 5-year statute of limitations, in which case Qiaodan needs to indicate when using that there is no connection between Jordan and Qiaodan; and pay 300,000 RMB for emotional damages and 50,000 RMB for legal expenses (the plaintiff did not seek damages so the Court only awarded emotional damages).
The plaintiff, Michael Jordan, claimed that since 1984, major Chinese media have conducted news reports on the plaintiff for decades, and they all use the Chinese transliteration of 乔丹 (Qiaodan) to refer to the plaintiff. Therefore, the transliteration of “Qiaodan” has been established with the plaintiff. The specific connection is well-known to the Chinese public, and the plaintiff has the right to name the Chinese “Qiaodan.” The defendant, Qiaodan Sports, used the plaintiff’s name “Qiaodan” in its trade name, products and commercial promotion activities without the plaintiff’s permission, which mislead consumers and constituted an infringement of the plaintiff’s name right.
Further, Bairen Trading Company sells the infringing products of Jordan Sports Company, so it constitutes a joint infringement. (Bairen has a physical store in Shanghai and was presumably added as a co-defendant to get jurisdiction in Shanghai).
The two defendants jointly argued that Jordan is just an ordinary surname in the United Kingdom and the United States. It is impossible for the plaintiff to enjoy the right of personality in the sense of Chinese law for a customary translation of a common English and American surname. The defendant has registered and used the “Qiaodan” trademark for decades and enjoys the trademark rights of the “Qiaodan” trademark in accordance with the law.
The plaintiff had long known that the defendant had used the “Qiaodan” trademark and trade name, but did not claim the rights in time, and the statute of limitations had already passed. The products sold by Bairen Trading Company are purchased through legal channels, so it has fulfilled its reasonable duty of care and does not constitute joint infringement.
The Shanghai Second Intermediate People’s Court held that the Qiaodan Sports Company, knowing that Michael Jordan has a high reputation, still chose the word “Qiaodan ” for trademark registration without authorization and registered the company name “Qiaodan.” In addition, Jordan Sports Company also registered Michael Jordan’s former jersey number “23” and the Chinese transliterations of his two sons Marcus Jordan and Jeffrey Jordan as trademarks. It was determined that Qiaodan Sports had the intention to mislead the public, so Qiaodan Sports Co. constituted an infringement of the plaintiff’s personality rights. Since some of the “Qiaodan” trademarks registered by Qiaodan Sports Company have already exceeded the five-year statute of limitations in the Trademark Law and have become irrevocable trademarks, reasonable measures should be taken to prevent the public from confusing the plaintiff and defendant.
This association of relevance not only achieves the purpose of stopping the infringement of the plaintiff’s personality rights, but also takes into account the legislative purpose of the Trademark Law regarding the five-year dispute period.
No word yet whether Qiaodan Sports will appeal.
Aaron Wininger is a Senior Attorney and Schwegman’s Director of China Intellectual Property.