WHY MICHAEL JORDAN FAILED TO ENFORCE HIS IMAGE RIGHTS IN CHINA

Michael Jordan, the famous former NBA basketball player, cares for his name and image if necessary also with legal means. Most recently he successfully challenged the unauthorized use of its image by a supermarket chain. This turned out to be expensive advertising. A court ordered the grocery chain to pay $9 Million compensation. What only a few know is that Michael Jordan also spent time and money to challenge third parties trademarks in China – without success. Our Chinese colleague Helen Huang tells us the case and highlights some crucial points in the Chinese trademark system.

The Michael Jordan trademark battle

Since 2012, Michael Jordan, has been challenging a Chinese sportswear company named QIAODAN SPORT for unauthorized using his name “Jordan” and the Jordan’s jumpman‘ logo as trademark with goods and services. Nevertheless, in the recent court trial of all 78 trademark dispute cases brought by Michael Jordan, the judge did not find a ruling in favor of the basketball Player.

The numerous trademark lawsuits brought by Michael Jordan were based primarily on naming rights and imaging rights. The basketball player requested the court to invalidate the registration of the trademark “Qiaodan” and a series of other relevant trademarks although the Chinese registrations have existed for over five years and have become incontestable. Qiaodan is a generally accepted transliteration of Michael Jordan’s surname Jordan.

Michael Jordan’s failure to proove his rights

Michael Jordan claimed that QIAODAN SPORT had built their brand around JORDAN without his permission. According to the judge, however, “Jordan” is a common surname in the U.S. and not a person’s full name. Michael Jordan failed to prove that people necessarily draw the connection between “Jordan” and “Michael Jordan” so that others shall not use “Jordan” to brand their products without Michael Jordan’s consent. Thus, Michael Jordan’s allegation of naming rights was not supported by the judge.

Michael Jordan’s allegation of using his jumpman‘ logo was not supported by the judge as well. The contested logo, a jumping basketball player in a style similar to the Jordan ‚jumpman‘ logo, lacks facial features and thus was unable to be identified as Michael Jordan.

The court thus ruled against Michael Jordan.

What went wrong for his Airness?

China is a ‚first to file‘ country, meaning that whichever company registers a trademark first will in general be granted the rights to use the trademark – with certain exceptions. Over the years, trademark battles have been witnessed between true owners of foreign brands and registrants of such brands in China.

The QIAODAN SPORT claimed that the company has been using the mark “Qiaodan” (Chinese version) on its products for nearly 20 years. The company has an annual income of nearly 3 billion RMB (EUR 400 million) in 2012 when Michael Jordan brought the trademark disputes before court. The company filed the “Qiaodan” trademark as early as January 2000. Michael Jordan has his own sports apparel brand with Nike, named Jordan.

Before Michael Jordan also Nike attempted to oppose the trademark application filed by QIAODAN SPORT but failed as well and did not take any further legal steps to challenge the mark. Since then, QIAODAN SPORT has filed more than 200 trademark applications in connection with the mark “Qiaodan”. Michael Jordan or NIKE should have continuously challenged the use and registration of the “Qiaodan” marks by the QIAODAN SPORT before the marks have gained great reputation in the Chinese market.

In Michael Jordan’s case, the disputed mark “Qiaodan” is a commonly adopted Chinese translation to “Jordan”, a general surname for Americans. As Michael Jordan failed to show that the mark points uniquely and unmistakably towards him, his allegation was not supported by the judge. It is thus essential to have a Chinese equivalence for trademark comprising exclusive words or letters in Latin characters in the course of marketing in China.

Résumé

It is not uncommon that famous figures’ names in the sport field have been unauthorized registered as trademark in China. The Chinese swimmer Ning Zetao, who won gold in the men’s 100 m freestyle at the just concluded world swimming championships, has found out that his name has been filed as trademark by an individual. Famous movie stars and filmmakers Mel Gibson and Nicole Kidman, singer and songwriter Kylie Minogue, and renowned shoe designer Jean-Michel Cazabat all faced the same situations but fortunately they acted timely and were able to successfully defend their names from being abused. It seems – other than in their home countries famous People must face the fact that their naming and image rights do not necessarily work out worldwide.

At least in China it is wise to have name and logos protected as registered Trademarks at an early stage. Even if you are famous (or think you are).