I looked over Jordan (but overlooked Qiáodān)

By Brand Heeler

Michael Jordan in a battle for his Chinese trade mark rights

Five years ago, basketball legend Michael Jordan began a legal battle to ‘recover’ various trade mark rights in China which he and his partners Nike alleged had been misappropriated by local sportswear manufacturer Qiáodān Sports: 乔丹(his name rendered in Chinese characters) and QIÁODĀN (i.e. JOR-DAN, the standard transliteration of 乔丹). In Chinese law, an individual has a ‘name right’ in his personal name. Chinese names usually consist of three monosyllabic parts: a surname (xing) and two ‘first names’ (míng). When transliterating foreign names into Chinese, the trick is to balance phonetic similarity with an appropriate meaning. Michael Jordan has long been known in Chinese as 乔丹(‘QIÁODĀN’ or ‘Tall Red’ – an almost perfect example of the art!)

Qiáodān is of course not a traditional Chinese name, being a syllable short. But the Supreme People’s Court held that the name right only requires two syllables (one xing and a míng) to apply. Nor did it matter that neither ‘Qiáodān’ nor ‘Jordan’ is technically Michael Jeffrey Jordan’s full name – there was sufficient evidence that he had been widely, consistently and exclusively known by this name among the relevant public. He was therefore awarded rights in 乔丹.

First points to Jordan then, but not a slam dunk. In respect of QIÁODĀN, the issue was more complicated:

–              QIÁODĀN is not the only way of approximating JORDAN in Mandarin (or other Chinese languages) – the Hashemite Kingdom, for example, is known as 约旦- ‘Yuē Dàn’ or, roughly speaking, ‘Treaty Dawn’ (hmm, not bad…)

–              QIÁODĀN does not relate uniquely to 乔丹/’Tall Red’ – there are some 25 other common characters pronounced ‘Qiáo’ and about the same for ‘Dān’, so that’s more than 600 possible meanings for the phrase (some of which are fairly outlandish i.e. 荞單 – ‘solitary buckwheat’ anyone?)

All in all, it was difficult for the court to agree that QIÁODĀN had the same 1-to-1 reference to Jordan as 乔丹did and so Qiáodān Sports scored an equaliser from the rebound. It was also highly relevant that Jordan and Nike had left it very late to claim their rights. Qiáodān Sports had been using their name since the 1980s and had registered their first trade marks around 2000, whereas Jordan had only started selling in China in the 1990s and had not taken any legal action until 2012. Had Jordan and Nike acted sooner, they may well have been more successful, but in the intervening years, Qiáodān Sports had been able to build up sufficient market recognition (what we in the UK might call ‘acquired distinctiveness’) to preserve their own rights in the disputed name.

Nike and Jordan seem to have been taken aback by the speed of Qiáodān Sports’ turnover but we reckon they’re victims of their own complacency. As China accounts for both more manufacturing – and increasingly more consumption – of world goods, western businesses still seem to have a lot of learning to do. No matter how big your brand elsewhere, you can’t get away with just translating your brand into Chinese characters and hoping for the best. And there’s certainly no excuse for delay – just like basketball, IP litigation is all about speed, accuracy and lightning-fast reflexes. 

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.