From "unique connection" to "stable connection", China's Highest Court Clarified Criteria for Protecting the Name Rights of Celebrities by Decision in Favor of Michael Jordan

Saelink Law - Yunchuan Zhou and Donglin Wu

Recently, NBA legendary star Michael Jordan obtained a new victory in the Supreme People’s Court of China (SPC) over squatting of his name. The SPC found that the disputed trademark , which was registered by Chinese sportswear maker Qiaodan Sports, had a stable connection with Jordan in China, and thus infringed Jordan’s right to his name. This case is so significant because the new criteria will help well-known foreign athletes, artists and other celebrities, who may require protection of their names or trade names in China.

The dispute between Jordan and Qiaodan Sports has a long history. Jordan filed a series of lawsuits against Qiaodan Sports from 2012, to seek cancellation of its Chinese character trademarks and to enjoin use of those marks in China. In the previous court proceedings, however, Jordan’s claim was not supported, until SPC first issued a decision in favor of Jordan in 2016. And the latest SPC decision clarified the criteria as below:

  1. “乔丹” (the transliteration of “Jordan” in Chinese) has high popularity in China;
  2. The relevant public in China usually refers to “乔丹” as Jordan himself, which is beyond the general meaning of a surname in western countries;
  3. Before the filing date of the disputed trademark, “乔丹” had a stable connection with Jordan in China;
  4. Jordan enjoys the name right protected by law for “乔丹”.

The most important thing here is that the SPC clearly replaced the previous “unique connection” with “stable connection”. The lower standard makes it easier for foreign celebrities to claim their name rights, and it is a huge good news for those who are troubled by trademark squatting in China.

In fact, it is not easy for Jordan to win, and he lost many cases either. Jordan’s victory will undoubtedly give those with similar trouble some experiences and lessons. Here are some points:

  1. Register your name in advance. In order to cope with potential trademark squatting in China, we suggest that the logo to be registered should include not only the English name, but also the corresponding Chinese characters and Pinyin (such as “乔丹” and “QIAODAN” in this case), as well as a portrait, outline or classic artistic image with identifying characteristics. At the same time, for the goods and services to be registered for use, it should be extended to sports and art related peripheral products as much as possible.
  2. Monitor closely and fight back in time. The main reason why Jordan lost many cases before was that he did not claim rights within the period of protection (5 years) required by Chinese law. Therefore, when you find someone registering your name in China, please promptly file a trademark opposition or invalidation request.
  3. Choose the convenient right holder. If you often carry out activities in China in the name of yourself, you can directly claim the name rights; if you mostly do business in the name of a company, i.e. a sports star foundation or artist studio, it will be better to defend the trade name by your company.
  4. Prove the popularity of your name in China. According to our experience, it is best to include news reports, media introduction, activities, and award records in China. At the same time, we suggest to use retrieval evidence report, notaries, and other means to fix and strengthen the proving power.
  5. Try to persuade a “stable connection”. For example, in this case, the SPC accepted the investigation report from Horizon Research Group. The report surveyed the public’s impression and association of “乔丹” in different regions of China. In the end, the SPC concluded that the procedures of investigation were standardized, the conclusions were true, and the proving power was relatively high, and thus recognized the “stable connection” between “乔丹” and Jordan himself.