To Stem the Passing Off on Michael Jordan

As reported, Michael Jordan, the basketball legend, made an announcement through PR Newswire that he’s formally suing Chinese sportswear maker Qiaodan Sports (the “Qiaodan Company”) for using without authorization. To Jordan’s words, what makes him more disappointed is his children’s names are also infringed by the company, and he also added the lawsuit is not about money.

Actually “Qiaodan”, the transliteration in Chinese of Jordan, accompanied with the logo of a basketball man have long been used by the Chinese sportswear maker, and that could not be newly known to Jordan in afraid. However, the lawsuit is filed when Qiaodan Company is preparing its listing; therefore “it’s not about money” might more accurately to be “it’s not ALL about money”.

By law, there’re no similar intellectual property rights to the right of public figure in China like that in U.S.A., and the only applicable right here may be the right of name. But, the transliteration of Qiaodan is not exclusively corresponding to Jordan in Chinese. And for this reason, it shall be analyzed with the specific facts in the case. First, the brand Qiaodan is marked with an image resembling Jordan (maybe it’s just the picture of the basketball star), and moreover for the brand is used on sportswear as well as the influence of Jordan in the basketball field, all these may make the consumers mistake a franchise has been authorized by Michael to the Chinese company or there’s a relation between the parties.

So, it’s a typical unfair competition case. As provided in Article 5 of Anti Unfair Competition Law, “using, without authorization, the business name or personal name of the other person on his own goods, leading people to mistake them for the goods of the other person” is kind of unfair competition conduct. Although by Qiaodan Company’s statement, the transliteration of Qiaodan is not the exclusive property of Jordan, yet the infringement could be established when ordinary consumers are taking that the company is using the name of the basketball star.

It also comes to our attention that the lawsuit is a dispute of the right of name, which is protectable by China laws as regulated in the General Principles of Civil Law of China and China Tort Liability Law. The name of American citizens shall also be covered by China laws, therefore, it’s kind of infringement when Qiaodan Company uses the translated name of Michael Jordan for commercial purposes with no permission from Michael Jordan.

Surely, the defendant could plea that Qiaodan is approved by the Chinese administration as the brand and company name, therefore any using of it is under law. While, it’s regulated in Article 1 of Replies on Several Issues Concerning the Hearing on the Civil Cases of the Conflict between Registered Trademark, Company Name and Prior Right by the Supreme People’s Court that the lawsuit filed for the infringement against prior rights, like copyright, design, company name right, by words or images in others’ trademark application, which complies with Article 108 of Civil Litigation Law, shall be accepted by the court. For this, the lawsuit filed by Michael Jordan shall be accepted by the court in China.

Once the court judges Qiaodan Company to take the infringement liability for using the name of Qiaodan (Jordan) and the image, the trademark will definitely be revoked. Now, it remains unknown to us whether the infringement by Qiaodan Company’s name is also claimed by Jordan. Actually chances to be determined as infringement are much lower when there’s only the transliteration but no logo on the trademark. Whereas the company name of Qiaodan may be judged with the intention to the infringement with the decision on the trademark infringement, and objectively speaking the name possible to arouse such mistaking.

Could Qiaodan Company maintain its commercial interests with its own strength when it loses the trademark and name? Perhaps, the case could be the best lesson of brand power. The legal theory of the case is also applicable in the case of squatting of Lin Shu Hao, which shall also be prohibited, for all these misconducts not only infringe the interests of Michael Jordan but jeopardizes the interests of consumers.

Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)

Author: Si Weijiang
Partner & Attorney-at-law of DeBund Law Offices

Founder & Editor-in-Chief of Bridge IP Law Commentary
Mr. You Yunting
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
You can also find us on FacebookTwitter and Linkedin.

Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.

 

Comments are closed.