Michael Jordan – lost final trademark battle in China
Once again a famous brand has got in to real big issues in China. We have to remember, before a launch of a new trademark, how important it is to also secure your company´s brands in strategic markets as China to avoid these kind of problems. The trademark law in China is not the same as we are used to here, that means also that you have to take different proactive steps in your strategy before a launch.
We see more and more of identical trademark issues in China for now;
- A company from Europe or USA starts to manufacture or sell a product in China and (often not always) also applies for a trademark in Latin characters.
- A Chinese company applies for an identical name but in Chinese characters/spelling.
- The battle starts.
In China Qiaodan Sports Co. Ltd. constructed in 2000 its entire brand around the former Chicago Bull’s Chinese name, ”Qiaodan,” (Qioadan—a phonetic translation of Jordan’s surname, pronounced “Chow Dan” in Chinese). The company filed for trademarks using Michael Jordan’s shirt number, ”23,” and even the names of his sons, Jeffrey and Marcus, in Chinese spelling. The logo looks also very similar to Air Jordan’s ”jumpman” logo.
Michael did sue the company, in 2012 and in last month they lost the final appeal in China´s highest court.
The Beijing high court’s ruling is the third and final decision against Michael Jordan, leaving Qioadan free to continue operating under its name and logo because the NBA star has once and for all failed to invalidate its trademarks.
So how should you avoid these problems?
- File a trademark application in both Latin and Chinese characters/Chinese Spelling in Latin – right away!
- If you get in to a potential infringement case in China – act immediately. If you wait, your chances will decrease – a lot.
Filing first is always important in China. With a few exceptions, China’s trademark system generally gives priority to whoever filed for the trademark first. In the U.S., by contrast, the system favors the person who uses the mark in business first. It’s basic, but it’s proved an issue for trademarks that think they should have the priority rights in China because they’re famous elsewhere.
For example both Pfizer and Hermes have had similar problems in China and both lost their battles…
So what does this mean for you? It´s very important that you always apply for your trademark in China in Chinese characters/spelling as well as in you native language – a head of time!
Do you want to know more? Contact one of our project managers and they will guide throughout the process.
Link to court decision: http://www.law360.com/ip/articles/685194/michael-jordan-can-t-block-sportswear-co-ip-in-china