In a case that serves as a warning to all trademark holders of the importance of obtaining trademarks in multiple jurisdictions, basketball legend Michael Jordan is embroiled in a legal battle in China over the use of his name, or variation of it.
Jordan filed a lawsuit against a Chinese company, Qiaodan Sports Co, that sells basketball shoes and jerseys sporting Mr. Jordan’s jersey number, 23, throughout China. Qiaodan is a Mandarin translation of Jordan. The company reportedly made $267 million last year and is planning a public listing in Shanghai. Jordan claims that Qiaodan has mislead customers into thinking its products were authorised by him. Jordan does not in fact have a registered trademark for the name Qiaodan in China but a provision in Chinese law prevents companies from freely using a famous person’s name, even if the celebrity doesn’t hold trademarks. In a statement on his website Jordan states;
“Qiaodan Sports has built a business off my Chinese name, the number 23, and even attempted to use the names of my children, without authorisation, I think Chinese consumers deserve to be protected from being misled, and they should know exactly what they are buying. I am taking this action to preserve the ownership of my name and my brand.” He added that he will invest any monetary award in “growing the sport of basketball in China.”
Qiadodan Sports have now countersued Jordan for holding up its IPO plans.
Jordan is far from being the only celebrity or brand to discover their name has been trademarked in China by an unrelated party. As many designers expand into China, they are discovering that their names have already been registered as trademarks by individuals hoping to extort money from them. The cost of registering a trademark in China costs in the region of £2000 but many designers are paying between £100,000 and £150,000 to buy their name from squatters. If a designer cannot demonstrate that they have a sufficient global reputation in China to supersede the third-party trademark, or prove the trademark had not been used, then they either have to consider using a different name in China or pay to regain their rights to the name.
The Kardashian sisters don’t sell their clothing and perfume in China, yet their names are already trademarked by Chinese businesspeople looking to profit from enterprises that want to tap China’s booming retail market. Similarly, although Hermès had filed its French brand name in China back in 1977, it did not register the Chinese character equivalent and it has recently lost a court case against a clothing company which was found to have validly registered the Hermès Chinese brand name.
Further problems suffered by designers can arise if a Chinese firm has registered the name in a different category, resulting in designers facing the prospect of sharing its name. One Chinese business is reportedly making underwear under the label of Theo Fennell, the name of the renowned London jewellery designer.
Remember, if you have plans for international expansion, registering your brand’s trademark across a range of jurisdictions is paramount! For more information on trademarks, see our seven most frequently asked queries on trademarks here!