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Jessie ZENG Tsinghua Law School

The Supreme People's Court of the People's Republic of China

Administrative Judgment (C-E Translation)

No.27 [2016], Retrial, Administrative Judgment,

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.

Authorized Representative: Qi Fang, Counsel of Fangda Partners

Beijing 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.”

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Legal Representative: Zhao Gang, director of Trade Review and

Adjudication Board.

Authorized Representative: Liu Yinying, examiner of Trade Review

and Adjudication Board.

Authorized Representative: Ma Yanyan, examiner of Trade Review and

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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Issue of the case:

Whether the disputed trademark’s registration infringed the retrial

applicant’s right of name on “乔丹”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 “ 乔丹 ” ? 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

1 Translator: “乔丹” is the Chinese translation of “Jordan”. Original Chinese words “乔丹” in disputed trademark are used In the case translation to avoid possible confusion.

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Inc.” ） has manifest subjective malice on the registration of the

disputed trademark;

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

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Trademark Law. However, as for those prior rights which have no

specific corresponding provisions in Trademark Law, if General

Principles of the 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

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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 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

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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 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

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other people’s prior right of name, and violated provision in Article 31 of

Trademark Law.

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 “乔丹”. This case involves the problem whether

the retrial applicant can enjoy right of name on part of its foreign name’s

Chinese translation, because “乔丹” 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 “乔丹”. Reasons are listed as below:

2.1When 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

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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 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

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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. 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,

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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 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

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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;

This particular name has already established stable corresponding

relationship with this natural person.

2.2Whether 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 “乔丹” as claimed by the retrial applicant, or

“迈克尔 .乔丹” , as wrongfully determined by Trademark Review and

Adjudication Board as the retrial applicant’s full name in the sued

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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.

2.3 Evidence in this case can prove that “ 乔丹” as claimed by the

retrial applicant satisfies 3 requirements previously elaborated by

this court, hence the retrial applicant has the right of name on “ 乔丹”.

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 “ 乔丹 ” to

refer to the retrial applicant. These evidences can prove that relevant

public in China, and China’s mass media extensively used “ 乔丹 ” to

indicate the retrial applicant, and “乔丹” 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

《乔丹获“冠中冠”称号》（Qiao Dan Win the Award of “Champion

of Champions” ） , 《乔丹迈入名人堂》（ Qiao Dan Joined the

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Celebrity Circle ） and etc. From June 1985 to January 2012, around

1376 articles about the retrial applicant like 《天王一对一乔丹 VS 科比》（King&King Qiao Dan VS Kobe） ,《与乔丹的故事》(Stories

about Qiao Dan) were published in sports , news, operating management,

study, education periodicals. Most articles used “乔丹”, and others used

“飞人乔丹”（Flying Man Qiao Dan），“迈克尔 .乔丹”(Chinese

translation of Michael Jordan), “ 飞人”（Flying Man） to 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 《乔丹写真集》 (Qiao Dan’s Photo Album),《最后的乔丹》 (Last Qiao Dan) and

etc. Within these books and monographs, 14 books names or monographs

names used “乔丹” to refer to the retrial applicant, and 7 books names

or monographs names used “ 迈克尔 . 乔丹 ” (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

《中国赛成神秘乔丹行众人不惜血本只为朝圣》(Chinese Basketball

Game Became A Mysterious Trip for Qiao Dan. Many People Spends A

Lot for This Pilgrimage ), 《NBA 中国赛乔丹成主角篮球之神让比赛 14 / 39


成配菜》 (Qiao Dan Became the Hero for NBA China. The God of

Basketball Takes the Shine off the Game ),《乔丹代表一代人青春沪媒：这一夜只属于篮球之神》(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 “ 乔丹 ” to refer to the retrial

applicant.

2.3.2 In the first instance’s trial record, Qiao Dan Inc. admitted that “乔丹” 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 “乔丹” to refer to the retrial applicant,

but when one mentions “ 乔丹 ” , 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 ‘ 乔丹 ’ 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

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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 “乔丹”.

2.3.4 Two survey reports can further prove that the related public used

“ 乔丹 ” to refer to the retrial applicant, and “ 乔丹 ” has already

established stable corresponding relationship with the retrial applicant.

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 “ 乔丹 ” . 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

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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. 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 ‘乔丹’?”, 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 “乔丹” to refer to the retrial applicant, and“乔丹” as well as

the retrial applicant has already established stable corresponding

relationship.

To sum up, current evidence in this case already prove that “ 乔丹 ” enjoys considerable reputation and was well-known to the related public.

Generally speaking, the related public China used “乔丹” to refer to the

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retrial applicant, and“ 乔丹 ” and the retrial applicant have already

established stable correspondence. Hence, the retrial applicant has the

right of name on “乔丹”.

Qiao Dan Inc. believes that there are other natural persons in China also

named “ 乔丹 ” and some press also use “ 乔丹 ” to refer to other

foreigners, therefore the retrial applicant cannot have the right of name on

“乔丹” . The court holds that although some other natural persons also

have their original name or Chinese translated name as “ 乔丹 ” or

include words “乔丹”, they are not extensively known by the public. No

evidence showed that related public in China extensively know or relate

other natural persons with “乔丹” . 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,

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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?

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 “ 乔丹 ” ; 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:

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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, 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

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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 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 ‘ 乔丹’? ”, 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

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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 “乔丹”? 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 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

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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.

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 “乔丹” to refer to the retrial applicant, but the retrial applicant, and

Nike Inc. use “迈克尔.乔丹” to stand for retrial applicant. Both “迈克尔.乔丹” and “乔丹” enjoy high reputation in related public, and are

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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 “乔丹”.

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“ 乔丹 ” band, is type 28, namely “apparatus for physical

exercises, swimming pool (for entertainment), roller skates, decoration to

Christmas trees (except light-fixtures and Candies).” “Apparatus for

physical exercises, 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 “ 乔丹 ” have established long term and extensive reputation in

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China. Meanwhile, related public extensively used and were already used

to using “ 乔丹 ” to refer to retrial applicant. “ 乔丹 ” and the retrial

applicant have established stable correspondence relationship. The

disputed trademark only includes words “ 乔丹 ” , 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 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 “乔丹” 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 “ 乔丹 ” with retrial applicant. Two survey reports show that 68.1% and

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58.1% of interviewees respectively think that retrial applicant has

association with “ 乔丹体育 ” 2. As for interviewees who have bought

commodities branded “ 乔丹体育 ” , 93.5% and 78.1% of the

interviewees respectively hold that retrial applicant is related with “乔丹体育”. When it comes to the specific relationship between “乔丹体育” 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 “乔丹体育” , these two survey reports can still further prove that

related public can be easily misled to associate disputed trademark with

the retrial applicant, because “乔丹体育” is the trademark owner of the

disputed trademark, and two words “乔丹” are the most distinguish part

in the term “乔丹体育” while other two words“体育” 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

2 “乔丹体育” means “Qiao Dan Sports”. 26 / 39


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 “乔丹”. 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 reputation. Related public in China mainly use “乔丹” to refer

to the retrial applicant. Qiao Dan Inc.’s original name is “福建省晋江市陈埭溪边日用品二厂”（ Fu Jian Province Jin Jiang City Chen Dai Xi

Bian Commodity Factory II ） . This name has nothing to do with “ 乔丹”, but was changed to “晋江市乔丹体育用品有限公司”（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

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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 “乔丹” 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 “ 乔丹” 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 trademark agency in Jin Jiang City to come up names, and

‘乔丹’ 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 “乔丹” 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

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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 “ 杰弗里 . 乔丹 ” （ Chinese Translation of

“Jeffrey Jordan”）, “马库斯.乔丹” （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 “杰弗里”（ Chinese

Translation of “Jeffrey” ） , “ 马库斯 ” （ Chinese Translation of

“Marcus” ） ,”JIEFULI”(Chinese Pinyin of “ 杰弗里 ” ),

“MAKUSI”(Chinese Pinyin of “马库斯”) 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

PICTORIAL in 1998, as elements for independent trademark registration,

or as elements to combines with “ 乔丹 ” , “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.

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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 “湖人队 HURENDUI”

（ LAKERS TEAM’s Chinese translation and its Chinese

Pinyin） trademark. Meanwhile, this company also used “ 湖人队”（Chinese translation of LAKERS TEAM）as enterprise name. Based

on the facts listed above, Qiao Dan Inc.’s use of “ 乔丹 ” , 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

“ 乔丹 ” , and his basketball jersey number “23”, and particularly

names of retrial applicant’s two 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

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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 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

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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 乔丹 ’ 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 “ 乔丹”, and related public will not be misled and etc.

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

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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

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.

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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 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

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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 “ 乔丹” . Qiao Dan

Inc. used “ 乔丹 ” 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 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.

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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

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

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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), 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

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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 :

1. Revoke Beijing First Intermediate Court’s No.9163 Administrative

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)

3. Revoke Trademark Review and Adjudication Board of State

Administration of Industry and Commerce’s No.052058 (2014)

adjudication on No.6020569 disputed trademark “乔丹” .4. Trademark Review and Adjudication Board of State Administration of

Industry and Commerce shall remake adjudication to No.6020569

disputed trademark “乔丹”.

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.

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This is the final judgment.

Chief Judge: Tao Kaiyuan

Judge: Wang Chuang

Judge: Xia Junli

Judge: Wang: Yanfang

Acting Judge: Du Weike

December 7, 2016

Court Clerk: Bao Shuo

Court Clerk: Zhang Bo

The Supreme People’s Court of the People's Republic of China (Sealed)

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