Name Right Can Constitute “pre-existing right” Protected by Trademark Law
——Michael Jeffrey Jordan v. Trademark Review and Adjudication Board and QIAODAN Sports Co., Ltd.
[Syllabus]
The name right is an important personal right of a natural person to his or her name, and the name right may constitute “pre-existing rights” under Article 31 of the Trademark Law of the People’s Republic of China as amended in 2001.
“Use” is one of the bundle of rights of the name right holder, whereas not an obligation he or she undertakes, nor a legal precondition for the name right holder to claim protection over his or her name. Subject to the conditions for the protection of the name right, the natural person has the right to obtain the protection of the name right on specific names not actively used under the provisions of Article 31 of the Trademark Law of the People’s Republic of China as amended in 2001.
If a natural person claims the protection of name right for a specific name, the specific name shall meet three conditions. First, the specific name has certain popularity in China and is known to the relevant public; second, the relevant public uses the specific name to refer to the natural person; third, the specific name has established a stable correspondence with the natural person. If the Chinese translation of a foreigner’s name in a foreign language meets the above three conditions, the translation may be protected as a name under the law.
The market order or commercial success advocated by the trademark owner is not an entirely legitimate outcome of good faith business but is, to some extent, based on confusion of the relevant public. Maintaining such a market order or commercial success is not only unconducive to the protection of legitimate rights and interests of the name right holder, but is also not helpful for protecting the interests of consumers or for improving the trademark registration and use environment.
[Case No.] Supreme People’s Court (2016) ZGFXZ No. 27
[Cause of Action] Administrative dispute over trademark
[Collegial Panel Members] Tao Kaiyuan Wang Chuang
Xia Junli Wang Yanfang Du Weike
[Keywords] Trademark, dispute procedure, pre-existing right, name right, specific name, use, malice, good faith, market order
[Relevant Legal Provisions] Articles 4 and 99 of the General Principles of the Civil Law of the People’s Republic of China, Articles 2 and 20 of the Tort Law of the People’s Republic of China, Article 31 of the Trademark Law of the People’s Republic of China (2001 amended version)
[Basic Facts]
In the reopen case of the administrative dispute over trademark between the appellant Michael Jeffrey Jordan (hereinafter referred to as “Michael Jordan”) and the respondent the Trademark Review and Adjudication Board State Administration for Industry & Commerce of the People’s Republic of China (hereinafter referred to as “TRAB”) and the third party from the case of first instance QIAODAN Sports Co., Ltd. (hereinafter referred to as “QIAODAN Company”), the ‘乔丹（pronounced as Qiao Dan）’ trademark No. 6020569 (hereinafter referred to as “disputed trademark”) was filed by QIAODAN Company on April 26th, 2007 and was approved for use under Category No: 28 for sports equipment, swimming pools (for entertainment), roller skates and Christmas tree decorations (except lighting and candies) in the international classification, and the validity period was from March 28th, 2012 to March 27th, 2022. On October 31st, 2012, Michael Jordan filed a cancellation request on the grounds that the registration of the disputed trademark infringed his pre-existing right. On April 14th, 2014, the TRAB issued the SP ZI [2014] No. 052058 Decision on No. 6020569 ‘乔丹’ Trademark Dispute (hereinafter referred to as “Decision No. 052058”) and maintained the registration of the disputed trademark. Thereafter, Michael Jordan filed an administrative lawsuit.
The Beijing No. 1 Intermediate People’s Court (court of first instance) held that the evidence in this case was insufficient to prove that the name ‘乔丹’ clearly pointed to Michael Jordan. In addition, the products designated by the disputed trademark were quite different from the field of basketball where Michael Jordan bore influence. It was not easy for the relevant public to link the disputed trademark to Michael Jordan. The existing evidence was insufficient to prove that the registration and use of the disputed trademark improperly uses Michael Jordan’s popularity or may have other effects on Michael Jordan’s name right. The registration of the disputed trademark did not infringe Michael Jordan’s name right. The court of first instance upheld the Decision No. 052058. Michael Jordan then filed an appeal to the Beijing High People’s Court, which dismissed the appeal and upheld the original judgment. Michael Jordan applied to the Supreme People’s Court for a reopen case, and the Supreme People’s Court ruled that the case should be reviewed.
Holding
On December 8th, 2016, The Supreme People’s Court issued the (2016) ZGFXZ No. 27 Administrative Judgment, where it stipulated that Decision no. 052058 of the TRAB and the judgments of lower court were revoked, and the TRAB is ordered to make a new decision.
[Reasoning]
The Supreme People’s Court held that the issue in this case is whether the registration of the disputed trademark infringed the name right of the appellant therefore violated Article 31 of the Trademark Law of the People’s Republic of China-“application for trademark registration shall not infringe the pre-existing rights of others”. The issue of this case is divided into the following eight specific questions. First, what is the legal grounds for the appellant’s claim to protect his name right? Second, what is the specific content protected by the name right claimed by the appellant? Third, what degree and scope of popularity does the appellant have in China? Fourth, did the appellant and Nike Company authorized by him actively use the name ‘乔丹’ and what effect did the fact of active use have on the name right claimed by the appellant in the case? Fifth, does the specific situation of the disputed trademark cause the relevant public to mistakenly associate the disputed trademark with the appellant? Sixth, did QIAODAN Company acted in bad faith in registering the disputed trademark? Seventh, what is the impact of QIAODAN Company’s business status and its efforts on promoting, marketing and protecting its own enterprise name, trademark? Eighth, whether there is a laches on the part of the appellant in protecting his name right?
For the eight specific questions, the Supreme People’s Court respectively held as follows:
I. Legal grounds for the appellant to claim name right
Article 31 of the Trademark Law of the People’s Republic of China (amended in 2001) provided that ‘an application for trademark registration shall not infringe the pre-existing rights of others’. Therefore, Pre-existing rights specifically enumerated by the Trademark Law should be protected in accordance with the special provisions of the Trademark Law, and Civil rights or civil interests not specifically enumerated should be protected in accordance with the provisions of the General Principles of the Civil Law, Tort Law and other laws .
Clause 1, Article 99 of the General Principles of Civil Law of the People’s Republic of China and Clause 2, Article 2 of the Tort Law of the People’s Republic of China stipulate that natural persons enjoy name right in accordance with the law. Therefore, the name right may constitute “pre-existing right” as stipulated in Article 31 of the Trademark Law of the People’s Republic of China. If the registration of a disputed trademark infringes the pre-existing name right of others, it should be determined that the registration of the disputed trademark violates the provisions of Article 31 of the Trademark Law of the People’s Republic of China.
Names are used to refer to, address and distinguish between specific natural persons. Name rights are important personal rights enjoyed by natural persons for their names. With the continuous development of China’s socialist market economy, it has become increasingly common for natural persons with certain popularity to commercialize their names and endorse specific goods and services through contracts and other means to obtain economic benefits. When the pre-existing name right of another person is protected by the provisions of Article 31 of the Trademark Law of the People’s Republic of China, it not only protects the personal dignity of the natural person, but also the economic interests contained in the name of the natural person, especially the name of a famous person. If the name of a person who has a pre-existing name right is registered as a trademark without permission, misleading relevant public believe that the goods or services marked with the trademark have specific connections with the natural person ,such as endorsement or permission of said natural person, The registration of the trademark should be deemed to have infringed the pre-existing name right of another person and violated the provisions of Article 31 of the Trademark Law of the People’s Republic of China.
II. The specific content protected by the name right claimed by the appellant
When a natural person claims name right over a particular name, three requirements should be satisfied under Article 31 of the Trademark Law of the People’s Republic of China.
First, the specific name should have certain popularity, be known to the relevant public and be used to refer to the natural person. Article 6 (2) of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases of Unfair Competition is a judicial interpretation with respect to unfair competition acts “use the name of another person without permission and mislead relevant public”, which is closely related to the registration of disputed trademark which is likely to mislead relevant public. Therefore, in this case, the conditions for the protection of the natural person’s name right can be determined by referring to the provisions of the above-mentioned judicial interpretation.
Second, the specific name should have established a stable correspondence with the natural person. In resolving the conflict between the pre-existing name right and the registered trademark right involved in this case, the standard of protection should be reasonably determined, and the interests of the pre-existing name right holder and the trademark owner should be balanced. When a specific name claimed by a natural person has established a stable correspondence with the natural person, even if the correspondence relationship is not “unique”, the name right can be protected according to law. In summary, if a natural person claims name right for a specific name according to Article 31 of the Trademark Law of the People’s Republic of China, the specific name should meet the following three conditions. First, the specific name has certain popularity in China and is known to the relevant public; second, the relevant public uses the specific name to refer to the natural person; third, the specific name has established a stable correspondence with the natural person.
When judging whether a foreigner can claim name right with respect to the Chinese translation of his or her name in a foreign language, it is necessary to consider the relevant public’s common use of the name of the foreigner in China. If the Chinese translation meets the above three conditions, it may be claimed in accordance with the law. The existing evidence in this case is sufficient to prove that the name ‘乔丹’ has high reputation in China and is known to the relevant public. The relevant public in China usually refers to the appellant as ‘乔丹’, and the name ‘乔丹’ has formed a stable correspondence with the appellant, therefore the appellant can claim name right for ‘乔丹’.
III. Degree and scope of popularity of the appellant in China
Correctly ascertaining the popularity degree and scope of the appellant in China has a significant impact on ascertaining specific issues, such as whether the appellant enjoys the name right for ‘乔丹’, whether the disputed trademark is registrated in bad faith, and whether the relevant public is misled that the products marked with the disputed trademark are related to the appellant.
The evidence in this case can prove that before the filing date of the disputed trademark until 2015, the appellant had always had a high reputation in China, and the scope of his popularity was not only limited to the field of basketball, as he had become a highly popular public figure.
IV. Whether the appellant and Nike Company authorized by the appellant actively used the name ‘乔丹’, and what is its impact on the name right protection
First of all, according to the provisions of Article 99 (1) of the General Principles of the Civil Law of the People’s Republic of China, the right to use is one of the bundle of rights enjoyed by name holders, rather than obligation, or precondition of protection.
Secondly, whether the relevant public mistakenly believe that the goods or services marked with the disputed trademark have specific connection with the natural person, such as being endorsed or approved by the name right holder, is an important factor for ascertaining whether or not the natural person’s name right is infringed. Therefore, where the above three conditions concerning the protection of the name right are satisfied, the natural person has the right to obtain the protection of the name right for a specific name, even it is not actively used.
Finally, for foreigners who have a certain popularity in China, it is possible that he or she or interested parties did not actively use his or her name in China; or under certain circumstances, the “name” familiar to the relevant public and news media in China is not exactly the same as the name actively used. For example, in this case, the relevant public and news media in China generally refer to the appellant as ‘乔丹’, whereas Michael Jordan and Nike Company mainly use ‘迈克尔·乔丹’. However, both ‘迈克尔·乔丹’ and ‘乔丹’ have high popularity among the relevant public and are generally used by the relevant public to refer to the appellant, and the appellant has no objection to either. Therefore, the claim of TRAB and QIAODAN Company that the appellant and Nike Company do not actively use ‘乔丹’ and the appellant is not entitled to enjoy the name right for ‘乔丹’ is not persuasive.
V. Whether the specific circumstances of the disputed trademark will mislead the relevant public to associate the disputed trademark with the appellant.
The relevant public is likely to mistakenly believe that the products marked with the disputed trademark have specific connection with the appellant, such as being endorsed or approved by the appellant. The specific reasons are as follows. First of all, the evidence in this case is sufficient to prove that the appellant and his name ‘乔丹’ have long-term and extensive popularity in China and the relevant public is familiar with and generally uses the name ‘乔丹’ to refer to the appellant. A stable correspondence has been established between ‘乔丹’ and the appellant. Since the disputed trademark is only the Chinese characters as ‘乔丹’, it is easy for the relevant public to associate it with the appellant on seeing the disputed trademark and even to mistakenly believe that products marked with the disputed trademark have specific connections with the appellant. Secondly, QIAODAN Company specifically states under “Brand Risk” in its Prospectus: “Specially remind investors that some consumers may associate the issuer and its products with Michael Jordan, which may create a misunderstanding or confusion. Please note.” This indicates that QIAODAN Company has recognized that the relevant public is likely to mistakenly associate ‘QIAODAN’ with the appellant. In the trial record of the court of first instance, QIAODAN Company also recognized that “there is a possibility that the public who has not purchased our products may be misled.” Finally, the two market research reports completed by the Horizon Research Consultancy Group can further prove that the relevant public is likely to be misled.
VI. Whether the disputed trademark was registered in obvious bad faith by QIAODAN Company
In this case, whether the disputed trademark is registered in obvious bad faith by QIAODAN Company was an important factor to consider. The evidence in this case is sufficient to prove that QIAODAN Company was fully aware of the high popularity of the appellant and his name ‘乔丹’. Instead of negotiating with the appellant to obtain his permission or authorization, QIAODAN Company willfully registered a large number of trademarks closely related to the appellant, including the disputed trademark, and mislead the relevant public to believe that the products marked with the disputed trademark have a specific connection with the appellant. In this way, QIAODAN Company achieved the effect of “endorsement” by the appellant without incurring relevant costs. The act of QIAODAN Company violates the principle of good faith stipulated in Article 4 of the General Principles of Civil Law of the People’s Republic of China, shows obvious subjective malice during the registration of the disputed trademark and related trademarks.
VII. What is the impact of QIAODAN Company’s business status and its efforts on promoting, marketing and protecting its own enterprise name, trademark?
QIAODAN Company’s business status and enterprise name and trademark promotion, use, awards and protection situations are not sufficient to make the registration of the disputed trademark legal.
First, the name is used to refer to, call and distinguish a specific natural person, therefore the name right is an important personal right of the natural person to his or her name, whereas trademark is used for distinguishing source of goods or services , constituting a kind of property right which is substantially different from the name right. When ascertaining whether the registration of a disputed trademark infringes the prior name of another person, the key factor is whether relevant public is misled that the goods or services marked with the disputed trademark have specific connections with the name right holder such as endorsement or authorization. Therefore, even QIAODAN Company and its ‘乔丹’ trademark have gained a high popularity in specific product categories after years of operation, marketing and use, and the relevant public can recognize that the products marked with ‘乔丹’ are from QIAODAN Company, it is still not sufficient to prove that the relevant public will not be easily misled that there is a specific connection between the products marked with ‘乔丹’and Michael Jordan.
Second, since the disputed trademark was registrated by QIAODAN Company in bad faith, infringing Michael Jordan’s pre-existing name right, therefore the market order or commercial success argued by the TRAB and QIAODAN Company is not a legitimate outcome of QIAODAN Company’s business, whereas, to some extent, is derived from confusion of relevant public. Maintaining such a market order or commercial success is in contrary to the rule of protecting legitimate rights, and is in contrary to the rule of protecting the interests of consumers and improving the trademark registration and use system.
VIII. Whether there is laches on the part of the appellant in protecting his name right?
Clause 2, Article 41 of the Trademark Law of the People’s Republic of China stipulates: “If a registered trademark violates the provisions of Article 31 of this Law……, within five years from the date of trademark registration, ...... may request the TRAB to invalidate the registered trademark.” In the above-mentioned provisions, “within five years from the date of trademark registration” is the statute limitation for applying to the TRAB to invalidate a disputed trademark. The legislator has fully considered the balance of interests between pre-existing right holder and trademark owner when stipulating the 5 years statute limitation. The statute limitation may urge the right holder or the interested party to claim right protection according to law. In this case, the appellant filed an application for invalidation with the TRAB within five years from the date of registration of the disputed trademark, in compliance with the above-mentioned provisions. Therefore, the claim of the TRAB and QIAODAN Company that the appellant is negligent in protecting his name right lacks factual and legal grounds, and is not supported.
