The name game

A Qiaodan store in Beijing

Iconic is overused as an adjective in the media, although it probably deserves its place in the reports about the bitter battle between US superstar Michael Jordan and Chinese apparel brand Qiaodan Sports.

The row, which has dragged on across more than 80 lawsuits over eight years, features the biggest star in the history of basketball, as well as one of the best-known images in sport’s merchandising.

The dispute also has a claim to be a test case for how intellectual property rights are protected in China, following a major ruling by the highest court in the country that overturns two earlier verdicts that went in favour of the local brand.

On the face of it the Supreme People’s Court has served up a major victory for the basketball billionaire by deciding that use of ‘Qiaodan’ is an infringement because of its close connection to the superstar’s name.

The local press is reporting it as a vindication for China’s legal system, which has been criticised in the past for lax protection of foreign companies’ intellectual property (IP). Kang Lixia, an IP lawyer in Beijing, was one of the experts enlisted in support, telling the China Daily that the verdict was proof that firms receive equal protection “no matter where they are from”.

Of course, if that had always been the case, fewer newspapers would have felt the need to highlight the Supreme Court’s decision.

The background to the row is that the Fujian-based brand filed for the rights to Jordan’s Chinese name and its phonetic version ‘Qiaodan’ many years ago, choosing a transliteration of the basketball star’s name.

Jordan won an earlier round of the legal battle in 2016 to take back the trademark to his name written in Chinese characters. But he lost out on his claim to his name in Romanised English.

As many as 200 related marks were filed in total, including the rights to a silhouette of a leaping player that bears strong resemblance to the star’s slam-dunking Jumpman logo; as well as claims to the number 23, Jordan’s shirt number for much of his playing career.

All of this was much to the bemusement of Nike’s executives when they tried to register the Jordan brand in China a few years later. Because Qiaodan Sports owned the local language marks under the ‘first-to-file’ rules, Nike was turned away on the basis that its trademark would be confused with Qiaodan’s.

Nike then launched a counter-offensive, pairing up with Jordan to argue that the Chinese brand had effectively stolen his name. Their opponent fought back, pointing out that it had registered the mark through the proper channels and that it had been trading under it, so it wasn’t a case of the trademark ‘squatting’ that has bedevilled other foreign brands bidding to launch in the Chinese market.

Also in Qiaodan’s favour was that the name isn’t a direct translation of Jordan’s name into Chinese and that he hadn’t made previous efforts to licence the name for commercial purposes, even when it was clear that he had become a celebrity in China under a name that wasn’t his ‘own’.

That made the Supreme Court’s decision more of a surprise in ruling that the use of Qiaodan does infringe on Jordan’s rights because it has a strong enough connection to his name.

A few days earlier the same court had invalidated two trademarks imitating the signature N mark used by American shoemaker New Balance, bringing another multi-year legal dispute to an end.

This led to suggestions that the Chinese could be making more of an effort to meet commitments on IP rights outlined in the phase-one trade deal signed with the US at the start of this year, the South China Morning Post said.

It’s not a total victory for Jordan’s legal team, which has always argued that the use of his name implies that he endorses the Chinese sports brand. It doesn’t seem that Qiaodan will be ordered to give up any profits made on the back of his name, for instance, and the ruling doesn’t stop its usage of the Jumpman-like logo either, although that matter is going back for review by the trademark office.

Qiaodan also says that it won’t be deterred from using its other trademarks, so it looks like more work for the lawyers in the years ahead.

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