Worldwide: Michael Jordan's Great Win In China—Or Is It?

On December 8, 2016, Beijing time, the China Supreme People's Court issued a public decision granting Michael Jordan a win in his four-year battle over the right to own his name in Chinese characters.  But the win was not a complete one. In that same decision, Supreme Court concluded that Michael Jordan does not own the phonetics of the name JORDAN in Chinese characters.

What exactly does this mean?

The dispute started more than a decade ago between "Qiaodan Sports" (a Chinese sportswear company headquartered in the southeastern part of China) and Michael Jordan (the six-time NBA champion from the United States). Qiao-Dan is the English phonetic (the so called "transliteration") of JORDAN in Chinese characters. If you say "Qiao-Dan" to a Chinese native speaker, he or she recognizes that as referring to JORDAN in English.

The beginnings of the conflict date back to the 1990s. When Nike expanded the Air Jordan brand to China in the 90s, it registered the JORDAN mark in English. It did not, however, register the JORDAN mark in Chinese characters.

Qiaodan Sports was established around 1998. It started out as a small footwear company based in Fujian Province, China. In the ten-year period (between 2000 and 2010), Qiaodan Sports registered a number of QIAO-DAN trademarks. As further evidence of its true intent, it also obtained trademark registrations in various iterations of the jump man silhouette. Today, Qiaodan Sports owns close to 500 trademark registrations in China.  Some of these marks are shown below:

For whatever reason, Nike either failed to oppose these marks or decided not to pursue appeals with the Chinese courts. By 2012-2013, Qiaodan Sports had consistently used its Chinese version of the JORDAN mark for more than a decade. Once registrations in China pass the five-year mark, they are very difficult to remove through invalidation actions. And throughout that time, Qiaodan Sports continued to build its sports and footwear apparel empire. By 2015, it owned more than 5700 retail stores across China and had annual sales of RMB 3 trillion (roughly US $500 million). At one time, it even considered becoming a publicly traded company in China.

In 2012, Michael Jordan commenced actions to cancel Qiaodan Sports' trademarks, filing more than 78 appeals and lawsuits with China's Trademark Appeal Board, Beijing First Intermediate Courts, and Beijing High People's Court. He lost them all.

In 2016, the China Supreme People's Court (the equivalent of the Supreme Court in the United States) accepted Michael Jordan's appeal. The Supreme Court held a public hearing in April and issued its decision in December wherein it supported 3 out of 10 appeals filed by Michael Jordan, denying the other 7. The Supreme Court ruled that Michael Jordan enjoys personal name rights over the Chinese characters for QIAO-DAN (the 3 wins). While giving with one hand, the court took away with the other, denying Michael Jordan's rights in the corresponding Chinese phonetics for JORDAN (the 7 losses).

Is this really the "great win" as the media is claiming?  Not quite.

Out of the three trademark registrations discussed in the Supreme Court decision in which Michael Jordan was successful (outlined below), only the first registration would have a practical business impact on Qiaodan Sports. A quick search of Chinese trademark records shows that there are over 100 marks in China that are registered with JORDAN in Chinese characters. Among these 100+ marks, there are eight registrations that are comprised solely of the two QIAO-DAN characters. Qiao-Dan Sports  is still the owner of the English phonetics QIAO-DAN, the jersey shirt number "23", and the flying man silhouettes.

Unlike the United States, China follows the first-to-file system.  This means rights are based almost exclusively on registrations (except for some cases where senior rights are recognized as "famous"—a very high threshold to establish in China). Michael Jordan was having a hard time getting support from the China administrative and judicial system precisely because he (or Nike) did not have any senior rights in JORDAN through Chinese registrations. Quite simply, while Michael Jordan was one of the fastest on the basketball court, Qiaodan Sports was faster before the Chinese trademark office.  Qiaodan Sports beat Nike and Michael Jordan to it.

It is important to understand that there is no "fixed" Chinese mark for an English brand.  The Chinese language is a "fluid" language where the meaning of each character is determined mostly by the context (i.e., its surrounding characters). A Chinese brand can be created by translation (such as "Apple"), transliteration (such as "Google"), brand concept (e.g., BMW's Chinese brand literally means "treasure horse"), nickname (Viagra is known as "great brother" in China), or a combination of any of the above methods. In this case, after Nike's entry to the Chinese market in the 90s, due to the lack of an "official" Chinese name for Jordan, the market simply created one.  Over the years, the two specific QIAO-DAN characters have formed an exclusive connection with  "JORDAN" in English.  This exclusive connection, however, is only in the commercial world. Trademark owners have to take it one step further to register the English and Chinese marks together to formally and legally establish the connection.

While Jordan now owns the QIAO-DAN characters, he does not own the "sound" (the phonetics) for these characters.  However, it was still a good win for Jordan for the following reasons:

  • Characters are a more popular form of use than the phonetics; thus, among the two, Jordan won the more important one.
  • Qiaodan Sports' bad faith was recognized by the Supreme Court based upon its ownership of the silhouette logo, the famous jersey number "23," and the names of Jordan's two sons, in English and Chinese characters. Ultimately, this finding could be helpful in prevailing in the lower courts.
  • Overall, this is a favorable development for western brand owners. Through this win, Michael Jordan and Nike have formally announced to Chinese consumers that the company "Jordan Sports" has no connection to either the real Michael Jordan or Nike.  The message will be heard loud and clear.

Lessons learned from the Jordan v. Qiaodan lawsuit? If you are doing business in China and you do not yet have a formal Chinese brand name, search the market to see if one has been created for you and, if so, register it immediately. If not, devote your resources to creating one. If you already have a Chinese name, make sure to monitor the market periodically to make sure no other names—such as nicknames— have been created for your brand, and consider whether it makes sense to register them for defensive purposes. And if there are multiple Chinese brands floating in the market that all refer back to the same English brand (not uncommon in China), while it is important to seek protection legally, it is also important to start a campaign to "unify" your brand name in Chinese.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
15 Nov 2017, Conference, California, United States

Finnegan is a Gold sponsor of the second annual Digital Media & IP Forum, hosted by World Congress.

15 Nov 2017, Conference, London, UK

Finnegan partner Leythem Wall will consider European claim drafting strategy and will lead the Chemical Workshop during a two-day course, hosted by Management Forum.

15 Nov 2017, Seminar, Amsterdam, Netherlands

Finnegan partner Anthony Tridico will lead Forum Institute for Management’s course comparing patent law in the United States and Europe.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.