Jordan/Qiaodan Trademark Case – Translation Now Available Here

Thanks to the hard work of Jessie Zeng 曾 潇 of Tsinghua University Law School, and the support of his professor, former Chief Judge Randall Rader, we now have a translation of the Michael Jordan/Qiaodan case.  Here is a translation of the decision in word formatJessie Zeng has also kindly provided a translation of cited laws in the decision.

On first impression, the case has significant implications for entertainment law, trademark rights for well known foreign individuals in China as well  bad faith issues.  Here are some key points: 

A) The SPC overturned Beijing High Court’s view that required a definitive association between Qiaodan and Michael Jordan, but instead required a stable association.  The court relied heavily on general civil doctrine, including tort law, IP law and advertising law in making its analysis.  The court also noted that, with respect to foreigners,  the key factor is that the relevant public in China has gotten used to calling the foreigner with a Chinese name in translation.

B) The court also admitted a range of evidence to support the fame and reputation of Michael Jordan as proof of bad faith by Qiaodan, including a large number of articles, endorsements and survey data.

C) The court recognized that, with respect to foreign names,  sometimes the public may use a name for the individual that is different from the name the person actively uses, and that this name should be protectable.

D) The court also noted that Qiaodan’s prior investment activities and brand promotion did not give it any “squatter’s rights”, noting 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.” Qiaodan operates about 6,000 stores in China.  The case is in a sense a warning shot to trademark pirates that a business model based on bad faith is risky in today’s China.

In fact, in the many years that I have followed this case one of my greatest concerns was how much a court would be unwilling to disrupt expectations built around a bad faith business model.  Viewed as a political statement, the SPC is sending a strong and laudable signal by saying that relatively settled expectations based on bad faith registrations will not legitimize these trademark registrations and indeed can end up being quite costly.  Times are changing…

My thanks, once again, to Jessie Zeng! 

(Note: Translation revision: January 6, 2017).

 

Beijing IP Court Awards 50,000,000 RMB in Patent Damages

Continuing the trends in higher damage awards that rely less on statutory damages and more on actual damages, the Beijing IP Court on December 8 awarded damages of 50,000,000 RMB in favor of the holder of a “USB Key” patent  According to deputy chief judge Chen Jingchuan 陈景, this is the highest damage award of the court to date.  The damages included 49 million RMB in civil compensation plus 1 million RMB in legal fees. The case is Watchdata vs Hengbao (北京握奇数据系统有限公司 vs 恒宝股份有限公司), two Chinese domestic companies, for patent number ZL200510105502.1.  The plaintiff is a Beijing-based company involved in digital authentication and transaction security.

The patent in suit relates to USBkeys distributed by banks to customers for security. The court found infringement of both its product claims on a USBkey itself and its method claims for authentication when users perform an online money transfer.  The damages were based on a calculation of defendant’s sales and profit for patented products.  In addition, when three of the fifteen  infringing banks and the defendant refused to provide evidence of their sales, the court used evidence provided by the plaintiff. The basis for the court’s reliance on this evidence was  a judicial interpretation on refusals to supply evidence (My guess: 《最高人民法院关于民事诉讼证据的若干规定》 (20011221) article75 第七十五条 有证据证明一方当事人持有证据无正当理由桓不提供,如果对方当事人主张该证据的内容不利于证据持有人,可以推定该主张成立。)

Commentators have also noted that this may be the first time that the court has awarded legal fees to a prevailing party based on the time spent on the matter, which is also positive news for prevailing parties in Chinese commercial litigation.  

Update January 24, 2017: Here’s another useful blog from the comparative patent remedies blog from Yijun Ge, a student of both Prof. Cotter and Fordham.  This blog goes into greater detail on the methodology for calculating damages.

Jordan Wins Trademark Battle in China: Milk and Honey On the Other Side?

Michael Jordan won a partial victory in his 10 trademark  administrative appeals involving the Qiaodan sporting goods company for the 乔丹 (Jordan) mark at the Supreme People’s court.  Here’s a Chinese summary of the case from Sina.com, and an article from the Associated Press. 

The trial of the case was heard on World IP Day (April 26, 2016), was presided by SPC Justice Madame Tao Kaiyuan, and was attended by former CAFC Chief Judge Randall Rader, as an observer.

The decision reportedly grants to Michael Jordan and Nike the picture mark and the Chinese characters associated with Qiaodan.  Jordan and Nike did not win the pinyin (Romanized) Qiaodan because that can be expressed in many different ways in Chinese ideographs. 

The Chinese press is treating this as a win for Jordan and NIKE.  The Qiaodan website was dismissive of the case, noting that it had won 65 prior cases involving the mark.  In a somewhat related matter, as of this morning (November 8), I found online platforms, including in the US,  offering Qiaodan products under the Qiaodan name.  I also did not find the Qiaodan name in pinyin registered at USPTO.

Michael Jordan, in a statement to Reuters noted that “I am happy that the Supreme People’s Court has recognized the right to protect my name through its ruling in the trademark cases,” and that “Chinese consumers deserve to know that Qiaodan Sports and its products have no connection to me.”  The Qiaodan Company had previously brought a suit against Michael Jordan for trademark law suits that delayed its plans for a public offering. 

My initial impression is that the case does show the willingness of the Chinese judiciary to tackle issues arising from bad faith registrations that can raise some of the more thorny issues, as they may involve business models based on rights that may not have been obtained in good faith.  This decision is one of several indications that China is seeking to heighten its continuing efforts to address squatting, in the face of a giant Chinese Trademark Office case load (over 3 million applications in 2016), a huge trademark docket at Beijing’s IP court, a commitment at this year’s JCCT to undertake further efforts to combat bad faith filings, recent efforts to improve the environment for entertainment law including some decisions favoring “merchandising rights”, and a recent positive decision for a mark involving President-elect Donald Trump.

Postscript Dec. 13, 2016: Here’s a presentation that an SAIC official recently gave at a public program at USPTO on how the agency is dealing with bad faith filings.

I hope to make a full copy of the SPC decision available on this website, once I receive a translation.

Note for non-native English speakers: “Milk and honey on the other side” in the title of this blog is drawn from the folk song/ spiritual “Michael Row  Your Boat Ashore”.

 

IPR Local Hire Legal Position Opens at US Embassy Beijing

The US Embassy in Beijing has posted a new position announcement for an vacant IPR legal advisor.  This is a local hire for Chinese citizens or US citizens who meet qualifications as eligible family members.  The basic professional qualifications include:

Education:  University degree in Law, Foreign Relations, and Business Administration is required.

Experience:   Five (5) years of progressively responsible experience of working in the area of intellectual property is required.

Language:   Level IV (Fluent) speaking/reading/writing in English is required. (This will be tested.)  Level IV (Fluent) speaking/reading/writing in Chinese is required.

Knowledge:   Must have knowledge of the complex principles governing protection and enforcement of IPR, including patents, trademarks, copyrights and trade secrets, in China.

For further information please see this link.  The position closes December 19, 2016.