Michael Jordan’s recent trademark victory in China could be a turning point in the country’s treatment of foreign sports entities and brands, but lawyer Matthew Asbell said the battle is far from over. Asbell, a partner in the N.Y. office of intellectual property law firm Ladas & Parry, told SBD Global that Jordan’s popularity in China played an important role in the court’s decision. “The thing is that Michael Jordan won the case in China because his name is so famous in China,” he said. “Not every sports franchise out there is going to be considered famous to the extent that they are going to be able to overcome a similar problem, and Michael Jordan had to fight this for a long time.” Jordan initially filed a lawsuit against Chinese company Qiaodan Sports Co., which sells shoes and sportswear, in ’12. Jordan, the owner of the NBA’s Charlotte Hornets, is widely known as Qiaodan in China. Qiaodan is the Chinese transliteration of Jordan. However, Qiaodan Sports Co. has no connection to Jordan or Nike’s Air Jordan brand. China’s top court last week approved Jordan’s appeal, stating that the trademark of his name’s translation in Chinese characters “infringed on his right to own his name and violated the country’s trademark laws,” according to Xinhua. “It’s a good sign,” said Asbell, who deals with U.S. and global trademark disputes on a regular basis. “Until recently he had been losing.” Qiaodan operates some 6,000 stores in China, making hundreds of millions of dollars annually based in part on the false association with Jordan.
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A Qiaodan store in China.
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THE FIGHT CONTINUES: While the legal victory is a positive signal for other brands, it should not be underestimated how “essential” Jordan’s popularity and fame was to the decision, Asbell said. “If you are an athlete or sports franchise, I don’t think you want to rely on your belief that your name is famous around the world in order to try to overcome what other people beat you to the punch in a particular jurisdiction,” he said. “That would probably be bad practice.” The court ruling is still only a partial victory for Jordan as Qiaodan was allowed to continue using the name in Roman letters. “The battle is not totally over,” Asbell said. The U.S. trademark system, which is a common-law system, entitles brands and companies, even if they do not get a registration, to some rights based on use, Asbell explained. In most other countries, particularly those following a civil law system, entities usually have to register the trademark before they can safely use it. The party that gets the rights is often the one that filed first, regardless of whether it was the first to begin using the mark. “What you want to do is proactively secure those rights before anybody else does,” he said. “This type of proactive approach is how you avoid ending up in Jordan’s shoes -- no pun intended -- having to spend hundreds of thousands of dollars to get your name back.”
