Earlier this year,
reports emerged
that famous Chicago Bulls Basketball player Michael Jordan had lost his case in China against Chinese sportswear company Qiaodan Sports Co. (Qiaodan Sports)
Qiaodan Sports owns the “Qiaodan” (乔丹- pronounced chiow-dan) trademark in China, as well as a symbol similar to the familiar “jumpman” trademark used on “Jordan” branded products around the world.
When the Beijing Higher People’s Court ruled against Mr. Jordan in this case, it seems as if the court is saying Mr. Jordan has no right to his own name. How did this happen?
Mr. Jordan’s lawsuit was brought on the basis of Article 99 of China’s General Principle of Civil Law, which grants each individual rights to his or her own personal name.
Coverage
of Michael Jordan had begun in China as early as 1984 and in 1987, China state television, CCTV had begun showing NBA games with Michael Jordan in China. Mr. Jordan was always referred to by the Chinese transliteration of his name in China, “Qiaodan.” Unfortunately, Mr. Jordan did not think to register his name as a trademark in China.
Qiaodan Sports had registered “Qiaodan” as a trademark and had carried out a clear set of actions; including registering a trademark for the “jumpman” logo and advertising its sports apparel products at sporting events, to take advantage of the renown of the Qiaodan name. Survey’s of the Chinese consumer indicated that the Qiaodan brand was strongly associated with Mr. Jordan, though, in reality, he had nothing to do with such products sold in China.
Mr. Jordan brought a lawsuit in an effort to remedy the situation, and to regain control over his name in China. This year, the Beijing High Court ruled that despite Mr. Jordan’s claim, “Qiaodan” may refer to many other possible things and in any case “Jordan” was a very common surname in the USA. The court also found that the “jumpman” logo was a generic man without any distinguishing features. The court thus concluded that it was hard to associate “Qiaodan” or “jumpman” with Michael Jordan.
What are the takeaways? Most important is that, If Mr. Jordan had the foresight to register “Qiaodan” and the ‘jumpman” logo in China, all of this could have been avoided. China is a first to file Trademark system. The first party to register a trademark will have rights to ownership, regardless of another party’s prior use of the same or a similar mark.
The lessons here are relevant for other western sports figures, celebrities, fashion designers and companies. Your name is your brand. In a world connected by satellites and the internet, your brand is global whether or not you’ve spend one penny toward oversees marketing or sales. Individuals cannot rely on personal identity protections to protect their brand conducted under their personal name. Not in China and probably not in many other places.
China is promising “intellectual property reform” but Chinese reforms rarely take the form which is expected by the West. Western companies should not expect the first to file system in China to change. More likely, intellectual property reform in China will see greater protection for Trademarks (and other IP) duly registered in China. Those seeking to do business in China, or regionally in Asia, should be proactive about registration of their Trademark in China at an early stage. The best way to protect your brand in a first to file system, reforms or not, is to be the first to file.