Michael Jordan has been given the rights to the Mandarin version of his name after a five year legal battle.
So what happened?
In the 1980s, Michael Jordan’s name became ubiquitous with the Chicago Bulls and the Dream Team’s dominance on the international stage.
Nike introduced the Jordan brand in 1985 as a response to his success and used his image as inspiration for the Jumpman logo.
In 1993, Nike registered Jordan’s last name as a trade mark in China. Subsequently, in 2000 Qiaodan Sports (a Chinese retailer) registered the Qiaodan trade mark – a Mandarin transliteration of Jordan.
In 2012, Jordan unsuccessfully commenced proceedings to prevent Qiodan Sports from using his brand. Despite this, the Chinese Supreme People’s Court recently ordered the revocation of the Qiaodan mark in Mandarin characters because the similarity between the marks misled consumers as to the connection between Qiaodan and Jordan.
Interestingly, the Court distanced itself from the reasoning of intermediate courts which had held that Jordan was merely a generic name that lacked the reputation necessary to revoke the Qiaodan mark.
Comparatively, in Australia, Qantas recently sought to leverage the reputation of its JETSTAR trade mark when it filed a successful non-use application to have the trade mark, JET, removed from the Australian register. Although the trade mark was removed, it was the trade mark owner’s failure to use the mark that warranted the removal of the mark, not any alleged reputation in the JETSTAR trade mark.
The contrast between these decisions highlights the value in educating consumers to encourage them to identify with a particular trade mark. This also limits the potential to mistakenly rely upon the success of a brand in one jurisdiction as an indicator of the robustness of a trade mark portfolio internationally.
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