January 10, 2017
Michael Jordan’s (Partial) Trade Mark Win in China – Unjamming it for Foreign Brands
Michael Jordan’s (Partial) Trade Mark Win in China – Unjamming it for Foreign Brands
Michael Jordan, the professional basketballer and star in the 1996 film Space Jam, has partially won a trade mark dispute against a Chinese sportswear company, Qiaodan Sports. Jordan brought an invalidity action against Qiaodan Sports over the registration of the mark “乔丹”back in 2012 but has lost every step of the way until now. In December, the highest court in China, the Supreme Court, overruled all the previous verdicts and ruled that the Chinese characters  “乔丹”(which is pronounced “chow dan” – the Chinese rendering of the word JORDAN and the name by which Michael Jordan is widely known to the Chinese consumer) are “well-known” and that Qiaodan’s registration of the this trade mark clearly showed malicious intent. The ruling can be seen as an encouraging development for a foreign brand in China, especially in view of the fact that other foreign brands, e.g. Apple and Heineken, have lost their trade mark battles in China. In 2012, Apple agreed to pay £38m to a Chinese firm to settle a dispute involving rights to the IPAD mark. Further, Heineken could not cancel a registration for HEINEKEN in Chinese characters for “spectacles” and Apple could not prevent a Chinese company from continuing to use IPHONE on leather goods. However, the ruling can only be seen as a partial victory for Michael Jordan, with the Supreme Court ruling that Qiaodan Sports could keep its trade mark registration for QIAODAN in pinyin, a Romanised version of Chinese. In addition, Michael Jordan has disputed over 70 of Qiaodan Sports’ trade mark registrations, but many of these will be almost impossible to revoke under the Chinese Trade Mark law, which protects trade marks registered for more than 5 years. The Supreme Court’s decision is final and cannot be appealed further so it is certainly welcome news for large brand owners operating in China that the Supreme Court has invalidated the“乔丹”registration. However, it is of concern that the Supreme Court has allowed Qiaodan Sports to keep its registration for QIAODAN, and leaves the situation somewhat uncertain in China for large foreign brand owners which operate under transliterations of Chinese characters. Stobbs has extensive experience in advising on rights in China and all around the Asia-Pacific region. If you think you could benefit from our advice, please feel free to get in touch.
Tags
Fashion /  Food & Drink /  Trademarks /  Sport /  Celebrity /  Disputes

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