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07 January 2021
On Dec 30, 2020, the court finally made a public judgement on the case between Michael Jeffrey Jordan and Qiaodan Sports Co., Ltd. and Shanghai Bairen Trading Co. for name rights dispute. The court considered that 乔丹 as the translated name of the plaintiff's surname "Jordan" has long been used as its simplified translation to refer to the plaintiff.
The plaintiff has formed a stable corresponding relationship with his Chinese translation of "Jordan", i.e. 乔丹, and he enjoys the right of name on 乔丹 according to law. Qiaodan Sports Company, knowing the plaintiff’s popularity however without the permission of the plaintiff, used the words completely consistent with the plaintiff's equivalent Chinese translation, i.e. 乔丹, as an important part of its business name in the field of sporting goods, and registered or assigned related trademarks, did business promotion in various ways, and opened exclusive stores cover the whole country. Its long-term use of 乔丹 in business activities and behavior of misleading the relevant public has obvious intention of infringing the plaintiff's name right.
According to Nina Li, Partner and Trademark Attorney, IP March, the court considered that the above commercial behaviors are able to mislead the public to associate Qiaodan Sports Company with the plaintiff, and such association is one of the important factors for some consumers to decide to buy Qiaodan Sports Company's products.
“This is so that it can obtain more market opportunities and economic benefits by using the influence of the plaintiff when entering the market,” she says. “This confused association and misleading to the public will inevitably cause the plaintiff's mental pain. Therefore, the activity of Qiaodan Sports Company has constituted infringement to the name right of the plaintiff and thus it should stop the infringement, apologize and eliminate the influence.”
She adds that when infringement behavior happens on famous names, the owners should timely and actively take necessary action against such behavior.
“For this case, the behavior has lasted for 20 years and after years of operation, Qiaodan Sports Company has already had a large scale, occupied a certain market share, and has already had a certain popularity in related industries,” she says. “Its sports shoes packed by the shoebox had been recognized as well-known goods, the decoration of the shoebox had been recognized as unique decoration of the well-known goods and a device mark had been recognized as a well-known mark. In addition, Qiaodan Sports Company has also carried out a large number of advertising, sponsorship of sports events and public welfare activities, with huge investment. However, the above facts did not affect the court's determination that the registration and use of the trade name and the disputed trademark damaged Michael Jordan’s prior name right. This is very positive to the famous name owners and encourages them to take active and necessary action to protect their IP rights in China.”
She adds, “However, Michael Jordan was unable to cancel some of the registered 乔丹 trademarks as they have been registered for more than 5 years and cannot be cancelled based on his prior name right according to the Chinese Trademark Law. It shows the famous name owners how important it is to pay due attention to IP protection in China and take active and necessary action timely. It also warns business operators that bad-faith should always be avoided in their business activities.”
She advises that since China is a first-file jurisdiction, registering a trademark earlier is still an easy, economic and effective way in protecting one’s name in many aspects.
“After the name is registered as a trademark in China, you can obtain a stable and effective right to be enforced,” she says.
“Besides the name in its original language, its translations, transliteration, stage names, pen names, nicknames should also be registered. If the translation of the name can be different versions, make sure to always use the same version. This also applies to the transliteration. Pay attention to how your name is used in the reports of the media and whether any family member is exposed to the public. Check your trademark registrations from time to time and make sure the trademark protection is broad enough.”
She notes to pay attention to domain name protection, as a domain name can be registered without examination and with very low fees. “If the name is registered as the main part of any domain names, it will cost much more money and effort to cancel or transfer the domain name registered,” she says. “As there is a copyright registration system in China, for portrait, cartoon image, the image in a stage play or film and television play, copyright registration can also be pursued as a protection method. Based on such protections, when someone uses your name or items related to you, administrative methods or lawsuits can be initiated based on your prior rights.”
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