April 26, 2016 the World IP day. Nobody would believe that China Supreme Court did not have any special intention to choose this day to re-hear Michael Jordan’s case on the ownership of the Chinese name for Jordan in China (“Chinese Jordan“).
Jordan Company, a local Chinese company engaging in sports appliances, registered the Chinese Jordan as a trademark in several Classes in China (“Disputed Trademarks“). In 2012, Michael Jordan, the famous NBA player, applied to cancel the Disputed Trademarks to China Trademark Review and Adjudication Board (“TRAB“) based on the ground that the Disputed Trademarks infringed his right towards his name.
TRAB rejected the application of Michael Jordan and sustained the Disputed Trademarks. Then Michael Jordan appealed the TRAB decision to Beijing No.1 Intermediate Court. After being rejected by Beijing No.1 Intermediate Court, Michael Jordan decided to appeal to Beijing Higher Court. Unfortunately, Beijing Higher Court still did not support his appeal. As the final remedy, Michael Jordan applied to the China Supreme Court to re-hear this case.
In December 2015, the China Supreme Court decided to re-hear 10 cases filed by Michael Jordan with respect to the ownership of the Chinese Jordan in China. As they are highly similar cases, the China Supreme Court decided to re-hear them together.
The oral hearing was presided by the vice-president of the China Supreme Court, Tao Kaiyuan, and was heard by 5 judges at the China Supreme Court. At 9am April 26, 2016, Tao Kaiyuan declared the commencement of the oral hearing.
Major issues of this case
The chief judge, Tao Kaiyuan, summarised the major issues of this case as follows:
- the specific scope of protection of Michael Jordan’s name right in China;
- the popularity of the name of Michael Jordan in China;
- has Michael Jordan or Nike Company actively used the Chinese Jordan in China and whether this will affect the protection of Michael Jordan’s name right in this case;
- what is the legal ground for the protection of Michael Jordan’s name right;
- whether the Disputed Trademarks could mislead the Chinese consumers that they are related to Michael Jordan;
- whether the business operation of Jordan Company and the promotion, use and protection of the Disputed Trademarks by Jordan Company will affect this case;
- whether Jordan Company has obvious bad faith in registering the Disputed Trademarks;
- whether Michael Jordan was tardy in protecting his name right as claimed by him and how this will affect this case.
The basic arguments of Michael Jordan and Jordan Company made during the oral hearing are as follows:
- Michael Jordan enjoys high popularity in China. Chinese public will think of Michael Jordan when they see the Chinese Jordan. The evidences submitted by Michael Jordan are sufficient to prove that the Chinese Jordan is well-known in China as the Chinese name of Michael Jordan and Michael Jordan confirms that others can use the Chinese Jordan to refer to him. The Chinese Jordan is the name of Michael Jordan and should be protected by the law.
- Jordan Company has the bad faith to hitchhike the great fame of Michael Jordan by building its entire business around Michael Jordan. They first registered the Chinese Jordan as trademarks in China, then they registered basketball images as trademarks in China, then they registered the jersey number of Michael Jordan as trademarks in China, and combine the Chinese Jordan and basketball image and use it on basketball shoes and other sports products. Jordan Company even registered the name of Michael Jordan’s family members as trademarks in China. Jordan Company also committed that they knew Michael Jordan before their trademark registration. Its bad faith is very obvious.
- The Disputed Trademarks can easily mislead the Chinese public that they are related to Michael Jordan and therefore has damaged the right of Michael Jordan. Investigation shows that 70% of the people being investigated believed that Jordan Company had special relationship with Michael Jordan.
- The Chinese Jordan is not the name of Michael Jordan. He does not own any name right towards them.
- Michael Jordan never used the Chinese Jordan as his name before. There is no connection between them.
- Even if Michael Jordan and the Chinese Jordan has certain connection, there is no legal ground for Michael Jordan to claim the name right in this case.
- Michael Jordan licensed the relevant rights to Nike Company exclusively in 1990s. He has no right to claim damages.
- In the US and EU, a lot of trademarks containing “Jordan” have been successfully registered.
- Jordan Company invested great fortune in the Disputed Trademarks and the goodwill of Jordan Company built on them shall not be deprived of. Jordan Company started its business since 1992 and has been using the Disputed Trademarks for 24 years. Great money was spent on advertisement and numerous honors were awarded to Jordan Company. The trademark right enjoyed by Jordan Company is more stable, specific and real and deserves more protection and respect.
The oral hearing was finished at 13:12 today. The court did not make any judgement today and requested the parties to submit any supplementary opinions, if any, to the court within 7 working days.