the supreme people's court of the people's republic of

Jessie ZENG Tsinghua Law School1 / 38
The Supreme People's Court of the People's Republic of China
Administrative Judgment (C-E Translation)
the Supreme People's Court
Translator: Jessie ZENG, Juris Master, Tsinghua Law School
Retrial Applicant (the plaintiff in the first instance, and the appellant
in the second instance): Michael Jeffrey Jordan, male, born on February
17, 1963, United States Citizen, lives in Chicago, Illinois, United States.
Authorized Representative: Tian Tian, Counsel of Fangda Partners
Beijing Office.
Office.
Respondent (the defendant in the first instance, and the appellee in the
second instance): The Trademark Review and Adjudication Board of the
State Administration for Industry and Commerce. Its address is “No.1 of
Cha Manan Street, Xicheng District, Beijing.”
Jessie ZENG Tsinghua Law School
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Adjudication Board.
Adjudication Board.
Adjudication Board.
Third Party: Qiao Dan Sports Inc. Its address is “Xi Bian Industrial
District, Chen Dai, Jin Jiang, Fu Jian Province, People's Republic of China.”
Legal Representative: Ding Guoxiong, Chairman of the Board of Qiao
Dan Sports Inc.
Authorized Representative: Wei Zhi, Counsel of Zhong Lun Law Firm
Beijing Office,
Authorized Representative: Ma Dong Xiao, Counsel of Zhong Lun Law
Firm Beijing Office.
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Whether the disputed trademark’s registration infringed the retrial
applicant’s right of name on “”1 thereby violating article 31 of the
Trademark Law regarding “[n]o trademark application shall infringe upon
another party’s existing prior rights.”
The issue can be divided into 8 specific problems:
1. What is the legal basis for the retrial applicant’s claim on the protection
for the right of name;
2. What does the right of name that the retrial applicant claims specifically
protect;
3. How well-known is the retrial applicant in China, and what is the extent;
4. Whether the retrial applicant and his authorized party Nike Inc. have
actively used “”? What is the influence of this fact on retrial
applicant’s claimed right of name;
5. Whether the disputed trademark’s specific circumstance misled the
relevant public to falsely relate the disputed trademark with the retrial
applicant;
6. Whether Qiao Dan Sports Inc.hereinafter referred to as “Qiao Dan
Inc.” has manifest subjective malice on the registration of the disputed
trademark;
1 Translator: “” is the Chinese translation of “Jordan”. Original Chinese words “” in disputed trademark are used In the case translation to avoid possible confusion.
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7. What do Qiao Dan Inc.’s operation condition, its efforts in related
trademarks’ publicity and use, as well as its related trademarks’ awarded
prizes and received protection influence this case;
8. Whether the retrial applicant is remiss in protecting its claimed right of
name, and what is the influence of this factor;
Specific determination to each problem
1. What is the legal basis for the retrial applicant’s claim on the
protection for the right of name
Firstly, according to Article 31 of the Trademark Law,“No trademark
application shall infringe upon another party’s existing prior rights.” Since
the civil subject legally enjoys various civil rights, and the legislation can
hardly list every right, Article 31 of the Trademark Law does not
specifically prescribe or list any specific type of the prior right, but use the
term “prior rights” as general provisions to keep pace with the development
of economy and society, and meet the need of protecting civil party’s
legitimate rights and interests.
The court maintained that prior rights which have been specifically
prescribed should be protected according to the special provisions in
Trademark Law. However, as for those prior rights which have no specific
corresponding provisions in Trademark Law, if General Principles of the
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Civil Law of the People’s Republic of China (hereinafter referred to as
“General Principles of Civil Law”), the Tort Liability Law of the People's
Republic of China (hereinafter referred to as “Tort Liability Law”), and
other laws give them protection, and the civil subject has legally enjoyed
these civil rights or interests before the disputed trademark’s application
date, then these rights should be protected in the light of this general
provision in Trademark Law. (“No trademark application shall infringe
upon another party’s existing prior rights.”)
Besides, as for the retrial applicant’s right of name in this case, paragraph
1, article 99 of the General Principles of Civil Law prescribes that “Citizens
shall enjoy the right of personal name and shall be entitled to determine,
use or change their personal names in accordance with relevant provisions.
Interference with, usurpation of and false representation of personal names
shall be prohibited.” Meanwhile, paragraph 2, article 2 of the Tort Liability
Law prescribes that “[F]or the purpose of this Law, civil rights include right
to life, right to health, right to name….. and other personal rights as well
as property rights.” Hence, right of name can be one of the “prior rights”
in Article 31 of the Trademark Law. If the registration of the disputed
trademark infringed other person’s prior right to name, then its registration
infringed Article 31 of the Trademark Law. Therefore, the court does not
support Qiao Dan Inc.’s claim that “article 31 of the Trademark Law does
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not have specific provision that prior rights include the right of name,
therefore, one cannot use the miscellaneous provisions or give liberal
interpretation to prior rights to limit others from obtaining trademark
registration.”
Last but not least, the name is used to refer to, call, and differentiate
particular natural person, and the right of name is an important personal
right a natural person enjoyed on his or her name. With the development
of our socialist market economy, it is common that people who enjoyed
some popularity take commercial exploitation on their names through
contracts or other methods to endorse commodities or services, and
receive economic benefit in such business. Celebrity endorsement becomes
an important marketing strategy for operators to enhance brand image,
promote commodity or service, and expand popularity. Paragraph 5, article
2 of Advertising Law of the People's Republic of China prescribes that,
“Endorser in this Law shall mean natural person, legal person or other
organization, other than the advertiser, that recommends and testifies for
commodity or service in their own name or image.” Article 20 of Tort
Liability law regarding property loss damages resulting from infringing
other people’s personal rights also shows that China’s law recognize and
protects the economic interest in people’s personal rights and interest (right
of name included). Hence, when Article 31 of Trademark Law is applied
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to protect other’s prior right of name, this kind of protection will not only
involve the protection for natural person’s dignity, but also cover the
protection to natural person’s name, particularly the protection to the
economic benefit included in the celebrity’s name. Since the trademark’s
main function is to distinguish the source of product or service, the
unauthorized trademark registration of the name which other people
enjoyed prior right of name on will not only harm the natural person’s
dignity, but also easily confuse the relevant public to relate the commodity
or service, which has disputed trademark on, with this natural person’s
endorsement and license. This action infringed the natural person’s right of
name, and hurt the consumer’s legitimate interest and right at the same time.
Based on the reasoning above, according to article 99 of the General
Principles of Civil Law, Article 2 of Tort Liability law, the natural person
legally enjoys the right of name. The unauthorized trademark registration
of the name which other people enjoyed prior right of name on will easily
confuse the relevant public to relate the commodity or service, which has
this trademark on, with this natural person’s endorsement and license. It
should be determined that the registration of this trademark infringed other
people’s prior right of name, and violated provision in Article 31 of
Trademark Law.
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2. What does the right of name that the retrial applicant claims
specifically protect?
The underlying point of this problem is whether the retrial applicant can
enjoy right of name on “”. This case involves the problem whether the
retrial applicant can enjoy right of name on part of its foreign name’s
Chinese translation, because “” is the Chinese translation of retrial
applicant’s English name “Jordan” (in his full name “Michael Jeffrey
Jordan”). The court believes that according to the requirement for
protecting natural person’s right of name, the retrial applicant enjoys right
of name on “”. Reasons are listed as below:
2.1 When the natural person claimed protection on the right of name
for particular name according to Article 31 in Trademark Law,
several requirements have to be satisfied.
First, this particular name has to enjoy some reputation, should be well-
known to relevant public, and should be used to refer to this natural person.
To clarify the term “name” in article 5(3) of The Law of the People's
Republic of China Against Unfair Competition, Interpretation of the
Supreme People’s Court on Some Issues Concerning the Application of
Law in the Trial of Civil Cases Involving Unfair Competition prescribes
that “The pen name or stage name of any natural person that has certain
market popularity and is known by the relevant public may be affirmed as
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a “name” prescribed in Article 5(3) of the Anti-unfair Competition Law.”
Although this provision was aimed at circumstance about “using, without
authorization, the enterprise names or personal names of others on their
own goods, leading purchasers to mistake them for the goods of others”,
this action of unfair competition is also an infringement action to others’
right of name. The determination of this action involves the factor “leading
purchasers to mistake them for the goods of others”. This factor has a close
relationship with the problem “whether the disputed trademark’s
registration will lead purchasers to mistakenly associate the disputed
trademark with retrial applicant’s license and endorsement.” Therefore,
this case can refer to provision in the above jurisdiction interpretation to
determine the requirement for protecting the natural person’s right of name.
Secondly, this particular name should have constituted stable
correspondent relationship with this natural person. Application of the
provision “[n]o trademark application shall infringe upon another party’s
existing prior rights” involves the right conflicts between the prior right
and the right of registered trademark. In order to solve the involved right
conflicts between the prior right and the right of registered trademark in
this case, it is necessary to reasonably determine the protection standard
for the prior right of name, and to balance the benefit between the person
who enjoys prior right of name and the person who has the trademark right.
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It is wrong to determine that the disputed trademark’s registration harms
this natural person’s right of name simply because this disputed trademark
uses or includes natural person’s “name” which is only known to some
people or is only used temporarily. In the meantime, it is also wrong to
determine in the way of the Trademark Review and Adjudication Board
who claimed that the precondition for protection is that the natural person’s
claimed “right” should established sole correspondence to this natural
person. This standard is too harsh for natural person to claim protection on
right of name.
The court holds that according to paragraph 1, article 99 of the General
Principles of Civil Law, the natural person enjoy the right of personal name
and shall be entitled to determine, use or change their personal names.
However, the right of name does not prohibit others from legally
determining and using the same personal name in good faith. Because of
duplication of name, it is hard for the name to constitute sole corresponding
relationship with the natural person. Meanwhile, besides the original name,
the natural person can also have stage name, pen name, translated name or
other names. From the perspective of historical tradition, the ancient people
can also have their style names, pseudonyms and etc. In special
circumstances, the relevant public are more familiar with or get used to
using other names, rather than the original name, to refer to the natural
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person. Other names are even more well-known than the original name. If
the Trademark Review and Adjudication Boar’s claimed “sole
corresponding relationship” is the precondition for protecting the right of
name, then people who have the same name with this natural person, or the
person who have more names besides the original one are all unable to
obtain protection on right of name no matter how well-known the name is
or what is actually the recognition of the relevant public. Hence, if
particular name the natural person claimed has already established stable
corresponding relationship with this nature person, it shall obtain the
protection for the right of name, even if the corresponding relationship does
not achieve the extent of “sole correspondence”. The court does not support
the “sole corresponding relationship” claimed by the Trademark Review
and Adjudication Board because it is too harsh.
To sum up, the court believes that when article 31 of the Trademark Law
regarding “[n]o trademark application shall infringe upon another party’s
existing prior rights” is applied, and the natural person claimed protection
for the right of name for particular name, this name has to satisfy 3
requirements:
1. This name must have certain reputation and is well known to relevant
public;
2. The relevant public use this name to refer to this natural person;
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relationship with this natural person.
2.2 Whether foreigners can claim protection for right of name on part
of his or her foreign name’s translated Chinese name.
The court holds that the relevant public in China get used to referring to
and calling the foreigner with his or her Chinese name which is part of
foreigner name’s Chinese translation. Many Chinese will not use the full
translated version of original foreign name, and sometimes are not familiar
with or do not even know the full translated Chinese name, because of the
language and culture difference as well as the convenience to call. Hence,
it is necessary to take relevant public’s appellation habit into account when
judging whether the foreigner can claim protection for right of name on
part of his or her foreign name’s translated Chinese name. In this case, both
“ ” as claimed by the retrial applicant, or “ . ”, as
wrongfully determined by Trademark Review and Adjudication Board as
the retrial applicant’s full name in the sued adjudication, are part of the
retrial applicant’s full English name’s (Michael Jeffrey Jordan) translated
Chinese name. These two names are all used by the relevant public to call
or refer to the retrial applicant. The court does not support Qiao Dan Inc’s
claim that simple family name or its translation cannot be the object for the
right of name.
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2.3 Evidence in this case can prove that “” as claimed by the
retrial applicant satisfies 3 requirements previously elaborated by this
court, hence the retrial applicant has the right of name on “”.
2.3.1 In the light of the evidence submitted by the retrial applicant, many
articles in China’s newspapers, periodicals, websites regarding the retrial
applicant, and many books and special journals have used “” to refer
to the retrial applicant. These evidences can prove that relevant public in
China, and China’s mass media extensively used “” to indicate the
retrial applicant, and “” has already established stable corresponding
relationship with retrial applicant.
Firstly, from June 26, 1984, to May 22, 2010, influential and important
newspaper in China, namely People’s Daily, Reference News, Economic
Daily, published 282 articles about the retrial applicant, for instances
“”Qiao Dan Win the Award of “Champion of
Champions”, Qiao Dan Joined the Celebrity Circle
and etc. From June 1985 to January 2012, around 1376 articles about the
retrial applicant like VS King&King Qiao
Dan VS Kobe,(Stories about Qiao Dan) were published
in sports , news, operating management, study, education periodicals. Most
articles used “”, and others used “”Flying Man Qiao Dan
“.”(Chinese translation of Michael Jordan), “”Flying
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Manto refer to the retrial applicant when the article title involves the
retrial applicant.
Secondly, from 1984 to 2011, 26 kinds of books and monographs related
with the retrial applicant published and issued articles like
(Qiao Dan’s Photo Album),(Last Qiao Dan) and etc. Within
these books and monographs, 14 books names or monographs names used
“” to refer to the retrial applicant, and 7 books names or monographs
names used “.”(Chinese translation of Michael Jordan) to
refer to the retrial applicant.
Thirdly, in October 2015, on Tencent.com, China News, Shanghai Hotline,
China Daily, Netease and other influential websites, articles like
(Chinese Basketball Game
Became A Mysterious Trip for Qiao Dan. Many People Spends A Lot for
This Pilgrimage ), NBA
(Qiao Dan Became the Hero for NBA China. The God of Basketball Takes
the Shine off the Game ),
(Qiao Dan is a Symbol for the Youth of This Generation.
Shanghai Press: This Night is Only for the God of Basketball) were
published about the retrial applicant’s business trip in China. Most of these
article titles used “” to refer to the retrial applicant.
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2.3.2 In the first instance’s trial record, Qiao Dan Inc. admitted that “
” has association with the retrial applicant, but it maintained that this
kind of association is not “sole” or “only“. Qiao Dan Inc. also admitted
that related public in China used “” to refer to the retrial applicant, but
when one mentions “”, this two words does not necessarily refer to
the plaintiff (retrial applicant). In the first instance, the court asked Qiao
Dan Inc., “Are there anyone else who also used ‘’ besides Qiao Dan
Inc. in mainland China? Have they obtained persistent influence and
reputation in mainland China?” Qiao Dan Inc. replied, “In the evidence
we submitted, no. After our registration, this kind of thing is impossible.
Besides, we have not found this kind of thing before the disputes. ”
2.3.3 In Qiao Dan Inc.’s prospectus, the “Brand Risk” part gave clear
indication “[a]ttention to Investors: Some consumers may relate the issuer
and its products with Michael Jordan thereby facing misunderstanding or
confusion. Here we gave our special notice to investors.” It is clear that
Qiao Dan Inc. also realized that the related public may relate the retrial
applicant with “”.
2.3.4 Two survey reports can further prove that the related public used “
” to refer to the retrial applicant, and “” has already established
stable corresponding relationship with the retrial applicant.
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Firstly, reasons about why the court admitted these two survey report are
listed as below.
The fact as well as the application of the law in this case is closed related
with the related public’s recognition and knowledge. Hence, objective, fair,
normative, transparent market survey is helpful for the court to make clear
about the public’s real recognition on “”. According to the survey facts,
two survey reports were made by Horizon Research Consultancy Group.
The survey was done in Beijing, Shanghai, Guangzhou, Chengdu,
Changshu to obtain ordinary consumer’s recognition about the relationship
between Qiao Dan brand and the retrial applicant. These two survey
report’s survey procedure was notarized by Beijing Chang’an Notary
Public Office and Shanghai Oriental Notary Public Office. These two
offices made detailed explanation to the interviewees’ composition, survey
method, sampling method, procedure for producing the survey conclusion
and etc. “Technical Specification”, “Questionnaire”, and “Cards” for
questions are also attached to the survey reports. Hence, this survey
conclusion has high authenticity and strong probative force. It can be used
together with other evidences in this case to prove related facts. Although
Trademark Review and Adjudication Board and Qiao Dan Inc. impeached
these two reports, they neither provide disproof, nor gave any sound
objection reason. Hence, the court does not support their claims here.
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Second, content about the survey reports are as below. Two survey reports
shows, when interviewees were asked “what will you firstly refer to when
one mentions ‘’?”, 85% and 63.8% of interviews replied respectively
that they came up with the retrial applicant, and 14.5% and 24% of
interviewees answered that they came up with “Qiao Dan Sports”. This
survey data can inter-prove other evidences admitted by this court, and
demonstrated that the related public often use “” to refer to the retrial
applicant, and“” as well as the retrial applicant has already established
stable corresponding relationship.
To sum up, current evidence in this case already prove that “” enjoys
considerable reputation and was well-known to the related public.
Generally speaking, the related public China used “” to refer to the
retrial applicant, and“ ” and the retrial applicant have already
established stable correspondence. Hence, the retrial applicant has the right
of name on “”.
Qiao Dan Inc. believes that there are other natural persons in China also
named “” and some press also use “” to refer to other foreigners,
therefore the retrial applicant cannot have the right of name on “”. The
court holds that although some other natural persons also have their
original name or Chinese translated name as “” or include words “
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”, they are not extensively known by the public. No evidence showed
that related public in China extensively know or relate other natural persons
with “”. In particular, in the first instance’s trial record, Qiao Dan Inc.
also admitted that besides Qiao Dan Inc. and the retrial applicant, no one
else “obtained persistent influence and reputation in mainland China.”
Therefore, the court does not support Qiao Dan Inc.’s claim here.
Qiao Dan Inc. also maintained that the retrial applicant had already
exclusively licensed the property right and interest on his name to Nike
Inc., hence he does not have the right to claim property right and interests
on the right of name. The court holds that the right of name is a kind of
personal right. Although the right of name can include economic interest,
for instance the right owner can license his or her name to others to make
commercial exploitation, the right of name itself cannot fully be separated
from the right owner, and cannot be fully transferred. Hence, even if the
retrial applicant exclusively licensed his name to Nike Inc. to make
commercial exploitation, he can still enjoy the right of name by himself,
and is entitled to independently require application revocation. Therefore,
the court does not support Qiao Dan Inc.’s claim here.
3. How well-known is the retrial applicant in China, and what is the
extent of the fame?
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In this case, correct determination about how well-known is the retrial
applicant in China, and what is the extent is very significant for the court
to determine the following issue: whether the retrial applicant can enjoy
the right of name on “”; whether Qiao Dan Inc. has obvious subjective
malice on its registration of the disputed trademark; whether the related
public would mistakenly associate commodities with disputed trademark
with the retrial applicant. The court holds that the evidence in this case can
prove that before the disputed trademark’s application date, until 2015, the
retrial applicant consistently enjoyed high reputation in China. He is not
only well-known in basketball circle, but also become a high profile public
figure. Reasons are as below:
3.1 As previously mentioned, the retrial applicant submitted evidence
including 1658 articles about himself on China’s related newspapers,
periodicals, as well as 26 kind of books and monographs. Although some
articles were mainly about the retrial applicant’s sports activities, the mass
media types were not limited to sports periodicals like Modern Sports,
Basketball and etc., types also include news, operation management, study,
education and other kinds of periodicals. In particular, some very
influential and authoritative newspapers including People’s Daily,
Reference News, and Economic Daily also made extensive and continuous
news report to the retrial applicant. Take into account the authority, type,
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scope as well as age of the audience of the mass media, and the publish
date, number and content of related articles, together with a large number
of books and monographs about the applicants, it is clear that current
evidence can already prove that the retrial applicant enjoyed high
reputation in related public in China, and his fame is no longer limited to
basketball field.
3.2 In 2015, around the time when the retrial applicant visited China,
Tencent.com, China News, Netease and other famous Chinese websites
published many articles about retrial applicant’s participation in related
business activities. These report can prove that currently, the retrial
applicant still enjoy great reputation in China. Judging from the words used
in these articles, for instance “Many People Spends A Lot for This
Pilgrimage”, “the God of Basketball”, “a Symbol for the Youth of This
Generation” and other emotional dictions, even if some exaggeration
rhetoric has been used, it is evident enough that the retrial applicant still
enjoys great fame in related public in China.
3.3 Two survey reports can further prove the extent and degree of the retrial
applicant’s reputation. According to these two survey reports, interviewees
are around 28 to 60 years old, and are local residents who lived in surveyed
area for more than 2 years. The population distribution characteristic of this
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survey is consistent with that of the 6th National Census in 2010. When
interviewees were asked “what will you firstly refer to when one mentions
‘’? ”, 85% and 63.8% of interviews replied respectively that they came
up with the retrial applicant. Hence, interviewees and data of two survey
reports can further prove that retrial applicant is extensively well-known in
China, and his reputation was not limited to basketball field.
3.4 Besides retrial applicant’s endorsement for “AIR JORDAN” series of
Nike Inc., he also endorsed the drink “Gatorade”, the underwear “Hanes”,
the cornmeal “Wheaties Box”, and other commodities which has no direct
relationship with basketball. Endorsement activities actually show that
retrial applicant’s image and reputation have already been extensively
recognized by related commodity operators. Meanwhile, the related public
can also have more chance to know and come into contact with the retrial
applicant by advertisement and mass media thereby further enhancing and
expanding retrial applicant’s reputation in China.
4. Whether the retrial applicant and his authorized party Nike Inc.
have actively used “”? What is the influence of this fact on the
retrial applicant’s claimed right of name.
Firstly, the court holds that, according to paragraph 1, article 99 of the
General Principles of Civil Law, “Citizens shall enjoy the right of personal
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name and shall be entitled to determine, use or change their personal names
in accordance with relevant provisions. Interference with, usurpation of
and false representation of personal names shall be prohibited.” Therefore,
“use” is one of right owner’s right, rather than right owner’s duty. Moreover,
“use” is not the legal prerequisite for the right owner to prohibit others from
interfering, usurping, false representing his or her personal names; it is not
the precondition for the right owner to claim the protection for his or her
right of name.
Secondly, when article 31 of the Trademark Law is applied to protect other
people’s prior rights, whether related public would easily be confused to
mistakenly associate the commodities or service, which has disputed
trademark on, with this natural person’s endorsement and license, is an
important factor for the court to determine whether disputed trademark’s
registration will infringe this natural person’s right of name. Hence,
according to article 31 of the Trademark Law, when three requirements for
the protection of right of name, as previously mentioned, are satisfied,
natural person are entitled to obtain protection for the right of name even
if he or she has not actively used the name. This solution is not only
beneficial for the natural person to protect his or her dignity, and economic
value in his or her name, but also good for preventing related public from
confusion. Consumer’s legitimate right and interest can be protected.
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Last but not least, the retrial applicant is an U.S. citizen. For foreigners who
enjoyed considerable reputation in China, this person or related interest
group may have not actively used their names. Sometimes, related public,
mass media in China may use or be familiar with the name which are not
the same with the name this person actively used, due to the appellation
and language habit, as well as culture difference. For instance, in this case,
related public and news media in China extensively use “” to refer to
the retrial applicant, but the retrial applicant, and Nike Inc. use “.
” to stand for retrial applicant. Both “.” and “” enjoy
high reputation in related public, and are both extensively used to refer to
the retrial applicant. Besides, the retrial applicant never make objection
about the above fact. Hence, the court does not support Trademark Review
and Adjudication Board and Qiao Dan Inc.’s claim that retrial applicant
does not have right of name because retrial applicant and Nike Inc. have
never actively used “”.
5. Whether the disputed trademark’s specific circumstance misled the
relevant public to falsely relate the disputed trademark with the
retrial applicant;
The specified commodity type for the disputed trademark, No.6020569“
” band, is type 28, namely “apparatus for physical exercises, swimming
pool (for entertainment), roller skates, decoration to Christmas trees
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swimming pool (for entertainment), roller skates are all common
commodities in sports, and Christmas trees (except light-fixtures and
Candies) are common commodities in daily life. The court holds that
related public can easily be confused to associate commodities, which have
disputed trademark o, with retrial applicant’s license and endorsement.
Reasons are as below:
First, evidence in this case can already prove that retrial applicant and his
name “” have established long term and extensive reputation in China.
Meanwhile, related public extensively used and were already used to using
“” to refer to retrial applicant. “” and the retrial applicant have
established stable correspondence relationship. The disputed trademark
only includes words “”, hence when related public see the trademark,
they may soon associate it with retrial applicant. Consequently, the related
public may mistakenly regard that the commodity with disputed trademark
has particular relationship with the retrial applicant’s license and
endorsement.
Besides, In Qiao Dan Inc.’s prospectus, the “Brand Risk” part gave clear
indication “[a]ttention to Investors: Some consumers may relate the issuer
and its products with Michael Jordan thereby causing misunderstanding or
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confusion. Here we gave our special notice to investors.” This notice shows
that Qiao Dan Inc. has already realized that related public may easily
associate “” with retrial applicant thereby facing confusion. In the first
instance’s trial record, Qiao Dan Inc. also admitted that “it is possible that
some people who have not bought our products may made such
association.”
Last but not least, two survey reports together with other evidences can
further prove that related public may easily be misled to associate “”
with retrial applicant. Two survey reports show that 68.1% and 58.1% of
interviewees respectively think that retrial applicant has association with
“”2. As for interviewees who have bought commodities branded
“”, 93.5% and 78.1% of the interviewees respectively hold that
retrial applicant is related with “”. When it comes to the specific
relationship between “” and the retrial applicant, interviewees
believe that the relationship may be endorsement, authorization of the
name, the enterprise operator and etc. (results list by proportion; from high
to low) Although the above survey data is aimed at the related public’s
recognition between retrial applicant and “”, these two survey
reports can still further prove that related public can be easily misled to
associate disputed trademark with the retrial applicant, because “
2 “” means “Qiao Dan Sports”.
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” is the trademark owner of the disputed trademark, and two words “
” are the most distinguish part in the term “” while other two
words“” are too ordinary to distinguish the source of goods.
6. Whether Qiao Dan Inc. has manifest subjective malice on the
registration of the disputed trademark.
In this case, whether Qiao Dan Inc. has obvious subjective malice on the
registration of the disputed trademark is a very significant factor for the
court to determine whether the disputed trademark’s registration would
infringe retrial applicant’s right of name. The court holds that evidence in
this case can prove that Qiao Dan Inc. registered a lot of trademarks
closely related with the retrial applicant when Qiao Dan Inc. was fully
aware of the reputation of retrial applicant and his name “”. Qiao
Dan Inc. had not consulted or negotiated with retrial applicant to obtain
license or authorization. Instead, it enjoyed retrial applicant’s
“endorsement” with few cost, and was permissive to the damage result that
the related public mistakenly associate commodities, which has disputed
trademark on, with retrial applicant. Qiao Dan Inc.’s action goes against
principle in article 4 of General Principles of Civil Law. Its action shows
manifest subjective malice. Specific reasons are listed as below:
First, from 1984 to 2015, retrial applicant enjoyed long term and extensive
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reputation. Related public in China mainly use “” to refer to the retrial
applicant. Qiao Dan Inc.’s original name is “
” Fu Jian Province Jin Jiang City Chen Dai Xi Bian Commodity
Factory II. This name has nothing to do with “”, but was changed
to “”Jin Jiang City Qiao Dan Sports
Commodity Inc.in September 2000, and then renamed with current name
in December 2009. Qiao Dan Inc.’s main business are “design, production
and sale of sports shoes, sportswear, sports accessories.” The business is
highly related with retrial applicant’s profession, and should have
considerable knowledge of the retrial applicant and his reputation. In fact,
Qiao Dan Inc. clearly admitted in first instance’s trial record that it did
register (the disputed trademark) when they are aware of the (retrial’s)
reputation.
Secondly, as for the reason why Qiao Dan Inc. used “” to register the
disputed trademark, Qiao Dan Inc. gave three totally different explanations
in the court’s hearing, in the first instance, and in the Second Intermediate
People’s Court of Shanghai’s trial about the lawsuit between retrial
applicant and Qiao Dan Inc. on the infringement of right of name disputes.
These explanations, for instance “” meanings “southern grass and
trees” or “wonderful” or “general meaningful of good will”, or “when Qiao
Dan Inc. was only a village-run enterprise, the company asked the local
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trademark agency in Jin Jiang City to come up names, and ‘’ is one of
these proposed names”, can hardly convince the court because it obviously
runs counter to the common sense and lacks factual basis. Hence, Qiao
Dan Inc. cannot gave a justified and reasonable explanation for using “
” to register the disputed trademark.
Lastly, besides the registration for this disputed trademark, Qiao Dan Inc.
and other related companies have successively registered a series of
trademarks closely related with retrial applicants. These registrations
further showed the subjective malice of Qiao Dan Inc. These trademarks
includes:
1. Qiao Dan Inc. registered a number of trademarks on Qiao Dan’s two
children’s names, namely “.”Chinese Translation of “Jeffrey
Jordan”, “.” Chinese Translation of “Marcus Jordan”,
and these two names’ Chinese Pinyin. Qiao Dan Inc.’s controlling
shareholder, Fu Jian Bai Qun Company, the party not involved in this case,
applied for 16 trademarks on “” Chinese Translation of “Jeffrey”,
“” Chinese Translation of “Marcus”,”JIEFULI”(Chinese Pinyin
of “”), “MAKUSI”(Chinese Pinyin of “”) respectively.
2. Qiao Dan Inc. used the picture , which has the same body shape as
that of retrial applicant’s basketball playing picture published on NBA
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PICTORIAL in 1998, as elements for independent trademark registration,
or as elements to combines with “”, “QIAODAN”, or the retrial
applicant’s basketball jersey number 23 to register a number of trademarks.
3. The affiliated company, Mai Ke Company, use image in Nike
Inc.’s No.643806 trademark, and No.4932232 trademark to apply for a
composed mark, No.1407911 trademark.
As for NBA team LAKERS, Qiao Dan Inc.’s affiliated company Hu Ren
Dui Sports Company applied for the registration of No.1905046,
No.1967177, and No.2009309 “LAKERS TEAM” trademark as well as
No.1905050, No.1967878, and No.1961198 “ HURENDUI”
LAKERS TEAM’s Chinese translation and its Chinese Pinyin
trademark. Meanwhile, this company also used “”Chinese
translation of LAKERS TEAMas enterprise name. Based on the facts
listed above, Qiao Dan Inc.’s use of “”, as a disputed registration
trademark, is not an happenstance or an isolated event. Instead, it is only
one of the examples that Qiao Dan Inc. and other affiliated companies
registered a series of related trademarks on retrial applicant when they
are fully aware of retrial applicant’s high reputation. Qiao Dan Inc. has
no prior right on retrial applicant’s name “”, and his basketball
jersey number “23”, and particularly names of retrial applicant’s two
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children’s names. Qiao Dan Inc. and the Trademark Review and
Adjudication Board’s claim that Qiao Dan Inc.’s action is a kind of
renewal registration or defensive registration has no factual and legal
basis, hence the court does not support such claim.
7. What do Qiao Dan Inc.’s operation condition, its efforts in related
trademarks’ publicity and use, as well as its related trademarks’
awarded prizes and received protection influence this case.
The court holds that Qiao Dan Inc. did achieve a relatively large scale, and
has large market share as well as considerable reputation in related business
after years of operation, according to the first instance court and this court’s
ascertained facts. In No.9 Civil Judgment, final trial, 2002, this court has
determined that “sneakers packaged by Fujian Province Qiao Dan Sports
Co., Ltd.’s prior used shoe boxes are well-known commodities, and the
decoration for these shoe boxes is well-known commodity’s distinctive
decoration.” In June, 2005, Qiao Dan Inc.’s No.870 trademark has
been affirmed by the Trademark Office as well-known marks on
commodities of sneakers and sportswear. Besides, Qiao Dan Inc. has also
done extensive advertisement, sponsored sports games, philanthropy and
other activities with impressive investment and effort. However, the above
fact cannot influence the court’s determination that disputed trademark’s
registration infringed retrial applicant’s prior right of name. Reasons are
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listed below:
First, judging from the right’s nature, as well as the constitutive
requirements for infringing prior right of name, the name is used to refer
to, call, and distinguish specific individuals, and the right of name is
personal right enjoyed by individuals on his or her name. Trademark’s main
function is to distinguish the commodities or source of goods. It is a kind
of property right which has different nature from the right of name. As
previously mentioned, the key for determining whether disputed
trademark’s registration harms other people’s prior right of name is
whether this trademark will easily misled the associate public to mistakenly
relate commodities, which have disputed trademark on, with the retrial
applicant’s endorsement, license and etc. In fact, Qiao Dan Inc.’s use of
retrial applicant’s basketball jersey number “23”, name of retrial
applicant’s two children, and other registration trademarks closely related
with retrial applicant, shows that Qiao Dan Inc. turned a blind eye to the
damage result. Hence, the court does not support Trademark Review and
Adjudication Board’s claims which fails to affirm that ’s
correspondence relationship with retrial applicant is obviously stronger
than relationship with Qiao Dan Inc., and meanwhile falsely determined
that retrial applicant does not enjoyed right of name on “”, and related
public will not be misled and etc.
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Secondly, the specified commodity type for the disputed trademark is type
28, namely “apparatus for physical exercises, swimming pool (for
entertainment), roller skates, the decoration of Christmas trees (except
light-fixtures and Candies).” Qiao Dan Inc. does not submit evidence to
show that the publicity and use of the disputed trademark on above
mentioned commodities thereby proving that disputed trademark enjoyed
high reputation or distinctiveness. Moreover, the above mentioned
commodities are somewhat different from Qiao Dan Inc.’s main business,
namely “the design, production and sale of sneakers, sportswear, and sports
accessories.” Therefore, the court can hardly determine that disputed
trademark has high reputation or distinctiveness on disputed trademark’s
specified commodity type.
Lastly, according to article 4 of the General Principles of Civil Law, “In
civil activities, the principles of ….. honesty and credibility shall be
observed.” Qiao Dan Inc. applies for the registration of the disputed
trademark in bad faith. It harms the retrial applicant’s prior right of name
and accordingly goes against the principle of honesty and credibility.
Hence, Trademark Review and Adjudication Board and Qiao Dan Inc.’s
claim on market order or business success is actually not totally the
legitimate outcome under Qiao Dan Inc.’s honest operation and efforts, but
is to some extent, an achievement based on related public’s
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misidentification. Safeguarding this kind of market order or business
success is not only harmful to the protection of the right owner’s legitimate
interest on the right of name, but also unfavorable to the guarantee for
consumer’s interest or the purification for the trademark registration and
use.
Based on the above reasoning, the court holds that Qiao Dan Inc.’s
operation condition, its efforts in related trademarks’ publicity, use, related
trademarks’ awarded prizes and received protection and etc. cannot make
the disputed trademark’s registration legitimate.
8. Whether the retrial applicant is remiss in protecting its claimed
right of name, and what is the influence of this factor in this case.
According to Article 41, paragraph 2, “If a trademark that has been
registered violates the provisions of …..Article 31 of this Law, the owner
or the interested persons of the trademark may, within 5 years from the day
on which the trademark is registered, request the Trademark Review and
Adjudication Board to revoke that registered trademark.” The court holds
that “within 5 years from the day on which the trademark is registered” is
a statutory period to request the Trademark Review and Adjudication
Board to revoke the registered trademark. Legislators have fully considered
the interest balance between the prior right owner and the trademark right
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owner when they prescribed this period. This period can urge the right
owner or interested party to claim rights timely thereby avoiding the
circumstance that disputed trademark’s legal validity remains debatable
long after trademark’s registration has been affirmed. Otherwise,
trademark right owner’s publicity and use of disputed trademark will be
influenced, and trademark right owner’s legal rights and interests will be
harmed. In this case, retrial applicant requested the Trademark Review and
Adjudication Board to revoke the registered trademark within 5 years from
the day on which the trademark is registered. This request is in accordance
with the law. Hence, the Trademark Review and Adjudication Board, and
Qiao Dan Inc.’s claim that the retrial applicant was remiss in protecting his
right of the name has no factual and legal basis, and the court does not
support such claim.
To sum up, according to article 31 of the Trademark Law, prior rights
includes other person’s existing right of the name he or she enjoyed before
the disputed trademark’s application date. Retrial applicant has the prior
right of the name on the disputed trademark “”. Qiao Dan Inc. used
“” to apply for the registration of disputed trademark when it was fully
aware of the high and long term reputation in China. This registration
application will easily misled the related public to mistakenly associated
the commodities, which have disputed trademarks on, with the retrial
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applicant’s license and endorsement, thereby infringing the retrial
applicant’s prior right of name. Qiao Dan Inc. has manifest bad faith in the
disputed trademark’s registration. Qiao Dan Inc.’s operation condition, its
efforts in related trademarks’ publicity, use, related trademarks’ awarded
prizes and received protection and etc. cannot make the disputed
trademark’s registration legitimate. Therefore, the disputed trademark’s
registration violates article 31 of the Trademark Law, and should be
revoked according to article 41, paragraph 2 of the Trademark Law. The
Trademark Review and Adjudication Board should remake adjudication on
the disputed trademark.
As for the issue whether disputed trademark’s registration belongs to the
circumstance listed in article 10, paragraph 1(8), namely “[t]hose
detrimental to socialist morals or customs, or having other unhealthy
influences”, the court holds that disputed trademark will not cause passive
or negative influence to China’s politics, economy, culture, religion, nation
and other social public interest and public order. Therefore, the court does
not support the retrial applicant’s proposed retrial reason that disputed
trademark’s registration violates article 10, paragraph 1(8) of Trademark
Law.
As for the issue whether disputed trademark’s registration belongs to the
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circumstance listed in article 41, paragraph 1 of the Trademark Law,
namely “the registration of the trademark is obtained by deceitful means or
other illicit means”, the court holds that disputed trademark’s registration
is not actions which may disturb the market order, harm public interest,
unreasonably occupy public resource, or seek profits in other means.
Disputed trademark’s registration does not belongs to the “other illicit
means”, as listed in article 41 of the trademark law. Retrial applicant has
not submitted evidence proving that disputed trademark’s registration is
obtained by deceitful means or other illicit means. Hence, the court does
not support retrial applicant’s retrial reason that disputed trademark’s
registration violates article 41, paragraph 1 of the trademark law.
Based on the above reasoning, the court holds that determination of facts
and application of law in the sued adjudication and first instance judgment
are erroneous, and should be revoked. The second instance judgment
erroneously sustained the first instance judgment, and did not review the
appeal reason proposed by retrial applicant about disputed trademark’s
violation of article 31 of Trademark Law. This judgment should be also
revoked. After the court judicial committee’s discussion, judgment is as
below, according to article 4, and article 99 of General Principles of the
Civil Law of the People's Republic of China, article 2 and article 20 of Tort
Liability Law of the People's Republic of China, article 10, paragraph 1(8),
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article 31, article 41 of the Trademark Law of the People's Republic of
China (2001 Amendment), article 6, paragraph 2 of Interpretation of the
Supreme People’s Court on Some Issues Concerning the Application of
Law in the Trial of Civil Cases Involving Unfair Competition, article 70
and article 89, paragraph 1(2) of the Administrative Litigation Law of the
People's Republic of China , and article 76, paragraph1, and article 78 of
the Interpretation of the Supreme People's Court on Several Issues
concerning the Enforcement of the Administrative Litigation Law of the
People's Republic of China :
Judgment in 2014 (Administrative, Intellectual Property, First Trial,
2014).
2. Revoke Beijing High People’s Court’s No.1915 Administrative
Judgment in 2015 (Administrative, Intellectual Property, Final Trial,
2015)
Administration of Industry and Commerce’s No.052058 (2014)
adjudication on No.6020569 disputed trademark “” .
4. Trademark Review and Adjudication Board of State Administration of
Industry and Commerce shall remake adjudication to No.6020569
disputed trademark “”.
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The court acceptance fee for the first instance is 100 RMB, and the court
acceptance fee for the second instance is 100 RMB. All the court
acceptance fee shall be paid by Trademark Review and Adjudication Board
of State Administration of Industry and Commerce.
This is the final judgment.
Chief Judge: Tao Kaiyuan
Court Clerk: Bao Shuo
Court Clerk: Zhang Bo

the supreme people's court of the people's republic of

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