MICHAEL JORDAN v. QIAODAN SPORTS ENDS IN PARTIAL VICTORY

Michael Jordan. Photo: Kin Cheung/AP

Retired Basketball legend Michael Jordan has been successful in a long battle against China based Sportswear Company, Qiaodan Sports Co. for the unlawful use of his name in Chinese on its sportswear merchandise.

As far back as 2012, Jordan asked Chinese authorities to revoke the company's trademark as it featured a similar name and logo to his brand of sports merchandise which is currently produced by Nike. He argued that the company's merchandise and trademark was misleading to consumers about being connected to him. This is because the disputed name Qiaodan was a Chinese equivalent of Jordan, and the silhouette of a leaping basketball player was similar to the 'Jumpman' logo used by Nike for the Air Jordan brand. After an unsuccessful claim at two lower courts, Jordan appealed to the nation's Supreme Court. He asked the court to invalidate more than 60 trademarks used by the company for damage to his legal rights to use his name.  

Qiaodan branded trainer in Beijing. AFP Photo/Greg Baker

The Supreme Court of China ruled that the Fujian-based company should stop using Chinese characters for Qiaodan. The court agreed that the company had violated trademark law and that its registration of the name should be revoked. It was satisfied that by registering Jordan's name in Chinese as a trademark the company showed 'malicious intent'. However, the court stated that "the phonetic spellings of Jordan's Chinese name using the English alphabet do not infringe on his right to use his name in the country." It allowed the Company the right to use the Romanized version of the name Qiaodan (pronounced 'Chee-ow-dahn'); making it a partial victory. Also, no punitive damages for the infringement were awarded. 

A Qiaodan branded shoe in Beijing. AFP Photo/Greg Baker

In a statement to the BBC, Michael Jordan said: “I am happy that the supreme people’s court has recognised the right to protect my name through its ruling in the trademark cases...Chinese consumers deserve to know that Qiaodan Sports and its products have no connection to me...Nothing is more important than protecting your own name, and today's decision shows the importance of that principle."

The company has also responded in a blog post on its official Weibo account that it respects the court's verdict and will fulfill the legal requirements for intellectual property protection in relation to its brands.  According to Bloomberg, the U.S. Chamber of Commerce 'welcomed the court’s decision', stating that 'it would help reinforce protections on brands and discourage people from filing trademarks in bad faith.' The Executive Vice-President of the Chamber's Global Intellectual Property Centre, Mark Elliot stated: “This case is not only about an individual sports icon; it is about creating a legitimate marketplace where consumers can trust the products they buy...This ruling marks a step forward for efforts to foster a better business ecosystem in China.”

The problem of counterfeiting has been prevalent in China for quite some time and the government has frequently been criticised for its weak system, in terms of legal and regulatory framework, for the protection of intellectual property rights. It is also on the US priority watch list for 2016. Awarding punitive damages for the infringement in this case, would have served as a deterrent for future cases of infringement in China. The current costs of intellectual property infringement in China have been described as too low; which necessitates a review of the law to include definite penalties for such infringement. Jordan has another suit before the Court in Shanghai against Qiaodan Sports for the unlawful use of his name. This time, the sports icon is seeking damages and hopes for a successful outcome.

It is commendable that Michael Jordan has chosen to enforce his rights, albeit across borders. Sometimes it may be discouraging to pursue such cases because of the length of time it takes to get visible results, especially in jurisdictions with weak intellectual property regimes. However, it is only by fighting the act of piracy, passing off, selling counterfeits and infringing on intellectual property rights, that there can be global reforms in these areas. Countries where such disputes arise, should also take active steps to ensure there is sufficient redress in the law for aggrieved right owners, including those from other territories.