On October 16th 2019, the Supreme Court of PRC concluded the trademark dispute of Jordan Sports Company in Fujian province, holding that the trademark of the famous basketball player’s silhouette did not reflect Jordan’s personal characteristics, was not recognizable and did not constitute infringement of MICHAEL JORDAN’s right of portrait. Thus, they ruled in favor of Jordan Sports Company. That means the eight-year-old legal battle has finally come to an end with Jordan Sports Company retaining its “Jordan” trademark, it can put down its baggage for a second-round IPO preparation.
As the plaintiff, Michael Jordan claimed that the basketball player’s silhouette is an infringement of his portrait right. To be honest, based on Jordan’s status in those days, most consumers are inclined to link this silhouette to the name of MICHAEL JORDAN. Nevertheless, this silhouette is hardly a “portrait” of anyone in the legal sense, as there is no face at all! The Supreme Court declared that the disputable trademark “doesn’t reflect Jordan’s personal characteristics and is not recognizable”, thus they don’t think this trademark infringes Jordan’s portrait right.
Honestly speaking, this result is to many people’s surprise. After all, it’s an obvious fact that, Jordan Sports Company did take advantage of the name “Jordan” – the basketball celebrity of The United States for many years. Many Chinese consumers were misled by the trademark and believed the product produced by Jordan Sports Company was more or less related to MICHAEL JORDAN. For example, they believed that MICHAEL JORDAN was probably the image spokesperson of the products, or the product originated in the US. The truth is, Jordan Sports Company is a 100% Chinese company incorporated in Jinjiang of Fujian province, a city famous for its’ shoe-making industry, they have nothing to do with the USA nor MICHAEL JORDAN. Back in China twenty years ago, the IPR protection legal system was not very well established, by playing edge ball, this Company took advantage of the great reputation of MICHAEL JORDAN to open the market of sport products.
In fact, this lawsuit is just one of the series of lawsuits Jordan filed about the trademark “Jordan” or it’s Chinese transliteration or pinyin since 2012. According to Trademark Law of PRC, the general principle for trademark registration is ‘first-to-file’, meaning that whoever applied for the trademark first will get it. The exception is “prior rights”: meaning that applying for trademark registration may not prejudice the existing or ‘prior’ rights of others.
MICHAEL JORDAN had asked for revocation of 78 registered trademarks owned by Jordan Sports Company, based on the “prior rights” of his name, or based on an accusation of infringement on the portrait right.
In 2016, the Supreme Court ruled revocation of three of the 78 registered trademarks. Three trademarks “乔丹” (the Chinese transliteration of Jordan) owned by Jordan Sport Company were revoked based on the argument that Michael Jordan had a prior right over these two Chinese characters. Michael Jordan’s victory however seems not so great at all, because the revoked “乔丹” trademarks were merely defensive trademarks by Jordan Sports Company, applying to category 25, 28 and 32. The products that these three revoked trademarks related to were baby clothing, wedding dresses, beer, etc. and not the more important items such as sports shoes, sportswear, etc. because the time limit for making an application for revocation on these more important products had already expired. The time limit for revocation of a registered trademark is five years, MICHAEL JORDAN did not file a lawsuit against the “乔丹” trademark until 2012. It was therefore too late to revoke all of the other trademarks which had been registered more than five years ago.
As a matter of fact, as the deadline of revoking the 乔丹 trademark on the category “sneaker” was missed, it won’t be easy for Michael Jordan to protect his rights any more. Initially, Michael Jordan’s team didn’t pay much attention to the China market and therefore missed their best chance to defend their rights, what’s done is done.
On the other hand, for Jordan Sports Company, they missed the 2012 time window for IPO because of this eight-year’s proceeds, they paid their price too.
We are going to discuss other lawsuits between Michael Jordan and Jordan Sports Company to help people to understand the reason behind the judgement.
Useful link:
TRADEMARK OFFICE OF NATIONAL INTELLECTUAL PROPERTY ADMINISTRATION, PRC
