Jessie ZENG Tsinghua Law School



The Supreme People's Court of the People's Republic of ChinaAdministrative Judgment (C-E Translation)No.27 [2016], Retrial, Administrative Judgment, the Supreme People's Court Translator: Jessie ZENG, Juris Master, Tsinghua Law SchoolRetrial Applicant (the plaintiff in the first instance, and the appellant in the second instance): Michael Jeffrey Jordan, male, born on February 17, 1963, United States Citizen, lives in Chicago, Illinois, United States.Authorized Representative: Tian Tian, Counsel of Fangda Partners Beijing Office.Authorized Representative: Qi Fang, Counsel of Fangda Partners Beijing Office.Respondent (the defendant in the first instance, and the appellee in the second instance): The Trademark Review and Adjudication Board of the State Administration for Industry and Commerce. Its address is “No.1 of Cha Manan Street, Xicheng District, Beijing.”Legal Representative: Zhao Gang, director of Trade Review and Adjudication Board.Authorized Representative: Liu Yinying, examiner of Trade Review and Adjudication Board.Authorized Representative: Ma Yanyan, examiner of Trade Review and Adjudication Board.Third Party: Qiao Dan Sports Inc. Its address is “Xi Bian Industrial District, Chen Dai, Jin Jiang, Fu Jian Province, People's Republic of China.”Legal Representative: Ding Guoxiong, Chairman of the Board of Qiao Dan Sports Inc.Authorized Representative: Wei Zhi, Counsel of Zhong Lun Law Firm Beijing Office, Authorized Representative: Ma Dong Xiao, Counsel of Zhong Lun Law Firm Beijing Office.Issue of the case: Whether the disputed trademark’s registration infringed the retrial applicant’s naming right on “乔丹” thereby violating article 31 of the Trademark Law regarding “[n]o trademark application shall infringe upon another party’s existing prior rights.”The issue can be divided into 8 specific problems:What is the legal basis for the retrial applicant’s claim on the protection for the naming right;What does the naming right that the retrial applicant claims specifically protect;How well-known is the retrial applicant in China, and what is the extent;Whether the retrial applicant and his authorized party Nike Inc. have actively used “乔丹”? What is the influence of this fact on retrial applicant’s claimed naming right;Whether the disputed trademark’s specific circumstance misled the relevant public to falsely relate the disputed trademark with the retrial applicant;Whether Qiao Dan Sports Inc.（hereinafter referred to as “Qiao Dan Inc.”） has manifest subjective malice on the registration of the disputed trademark;What do Qiao Dan Inc.’s operation condition, its efforts in related trademarks’ publicity and use, as well as its related trademarks’ awarded prizes and received protection influence this case;Whether the retrial applicant is remiss in protecting its claimed naming right, and what is the influence of this factor;Specific determination to each problem：1.What is the legal basis for the retrial applicant’s claim on the protection for the naming right?Firstly, according to Article 31 of the Trademark Law “No trademark application shall infringe upon another party’s existing prior rights.” Since the civil subject legally enjoys various civil rights, and the legislation can hardly list every right, Article 31 of the Trademark Law does not specifically prescribe or list any specific type of the prior right, but use the term “prior rights” as general provisions to keep pace with the development of economy and society, and meet the need of protecting civil party’s legitimate rights and interests. The court maintained that prior rights which have been specifically prescribed should be protected according to the special provisions in Trademark Law. However, as for those prior rights which have no specific corresponding provisions in Trademark Law, if General Principles of the Civil Law of the People’s Republic of China (hereinafter referred to as “General Principles of Civil Law”), the Tort Liability Law of the People's Republic of China (hereinafter referred to as “Tort Liability Law”), and other laws give them protection, and the civil subject has legally enjoyed these civil rights or interests before the disputed trademark’s application date, then these rights should be protected in the light of this general provision in Trademark Law. (“No trademark application shall infringe upon another party’s existing prior rights.”)Besides, as for the retrial applicant’s naming right in this case, paragraph 1, article 99 of the General Principles of Civil Law prescribes that “Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited.” Meanwhile, paragraph 2, article 2 of the Tort Liability Law prescribes that “[F]or the purpose of this Law, civil rights include right to life, right to health, right to name….. and other personal rights as well as property rights.” Hence, naming right can be one of the “prior rights” in Article 31 of the Trademark Law. If the registration of the disputed trademark infringed other person’s prior right to name, then its registration infringed Article 31 of the Trademark Law. Therefore, the court does not support Qiao Dan Inc.’s claim that “article 31 of the Trademark Law does not have specific provision that prior rights include the naming right, therefore, one cannot use the miscellaneous provisions or give liberal interpretation to prior rights to limit others from obtaining trademark registration.”Last but not least, the name is used to refer to, call, and differentiate particular natural person, and the naming right is an important personal right a natural person enjoyed on his or her name. With the development of our socialist market economy, it is common that people who enjoyed some popularity take commercial exploitation on their names through contracts or other methods to endorse commodities or services, and receive economic benefit in such business. Celebrity endorsement becomes an important marketing strategy for operators to enhance brand image, promote commodity or service, and expand popularity. Paragraph 5, article 2 of Advertising Law of the People's Republic of China prescribes that, “Endorser in this Law shall mean natural person, legal person or other organization, other than the advertiser, that recommends and testifies for commodity or service in their own name or image.” Article 20 of Tort Liability law regarding property loss damages resulting from infringing other people’s personal rights also shows that China’s law recognize and protects the economic interest in people’s personal rights and interest (naming right included). Hence, when Article 31 of Trademark Law is applied to protect other’s prior naming right, this kind of protection will not only involve the protection for natural person’s dignity, but also cover the protection to natural person’s name, particularly the protection to the economic benefit included in the celebrity’s name. Since the trademark’s main function is to distinguish the source of product or service, the unauthorized trademark registration of the name which other people enjoyed prior naming right on will not only harm the natural person’s dignity, but also easily confuse the relevant public to relate the commodity or service, which has disputed trademark on, with this natural person’s endorsement and license. This action infringed the natural person’s naming right, and hurt the consumer’s legitimate interest and right at the same time.Based on the reasoning above, according to article 99 of the General Principles of Civil Law, Article 2 of Tort Liability law, the natural person legally enjoys the naming right. The unauthorized trademark registration of the name which other people enjoyed prior naming right on will easily confuse the relevant public to relate the commodity or service, which has this trademark on, with this natural person’s endorsement and license. It should be determined that the registration of this trademark infringed other people’s prior naming right, and violated provision in Article 31 of Trademark Law.What does the naming right that the retrial applicant claims specifically protect?The underlying point of this problem is whether the retrial applicant can enjoy naming right on “乔丹”. This case involves the problem whether the retrial applicant can enjoy naming right on part of its foreign name’s Chinese translation, because “乔丹” is the Chinese translation of retrial applicant’s English name “Jordan” (in his full name “Michael Jeffrey Jordan”). The court believes that according to the requirement for protecting natural person’s naming right, the retrial applicant enjoys naming right on “乔丹”. Reasons are listed as below:When the natural person claimed protection on the naming right for particular name according to Article 31 in Trademark Law, several requirements have to be satisfied.First, this particular name has to enjoy some reputation, should be well-known to relevant public, and should be used to refer to this natural person. To clarify the term “name” in article 5(3) of The Law of the People's Republic of China Against Unfair Competition, Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition prescribes that “The pen name or stage name of any natural person that has certain market popularity and is known by the relevant public may be affirmed as a “name” prescribed in Article 5(3) of the Anti-unfair Competition Law.” Although this provision was aimed at circumstance about “using, without authorization, the enterprise names or personal names of others on their own goods, leading purchasers to mistake them for the goods of others”, this action of unfair competition is also an infringement action to others’ naming right. The determination of this action involves the factor “leading purchasers to mistake them for the goods of others”. This factor has a close relationship with the problem “whether the disputed trademark’s registration will lead purchasers to mistakenly associate the disputed trademark with retrial applicant’s license and endorsement.” Therefore, this case can refer to provision in the above jurisdiction interpretation to determine the requirement for protecting the natural person’s naming right.Secondly, this particular name should have constituted stable corresponding relationship with this natural person. Application of the provision “[n]o trademark application shall infringe upon another party’s existing prior rights” involves the right conflicts between the prior right and the right of registered trademark. In order to solve the involved right conflicts between the prior right and the right of registered trademark in this case, it is necessary to reasonably determine the protection standard for the prior naming right, and to balance the benefit between the person who enjoys prior naming right and the person who has the trademark right. It is wrong to determine that the disputed trademark’s registration harms this natural person’s naming right simply because this disputed trademark uses or includes natural person’s “name” which is only known to some people or is only used temporarily. In the meantime, it is also wrong to determine in the way of the Trademark Review and Adjudication Board who claimed that the precondition for protection is that the natural person’s claimed “right” should established sole correspondence to this natural person. This standard is too harsh for natural person to claim protection on naming right. The court holds that according to paragraph 1, article 99 of the General Principles of Civil Law, the natural person enjoys the right of personal name and shall be entitled to determine, use or change their personal names. However, the naming right does not prohibit others from legally determining and using the same personal name in good faith. Because of duplication of name, it is hard for the name to constitute sole corresponding relationship with the natural person. Meanwhile, besides the original name, the natural person can also have stage name, pen name, translated name or other names. From the perspective of historical tradition, the ancient people can also have their style names, pseudonyms and etc. In special circumstances, the relevant public is more familiar with or get used to using other names, rather than the original name, to refer to the natural person. Other names are even better known than the original name. If the Trademark Review and Adjudication Boar’s claimed “sole corresponding relationship” is the precondition for protecting the naming right, then people who have the same name with this natural person, or the person who have more names besides the original one are all unable to obtain protection on naming right no matter how well-known the name is or what is actually the recognition of the relevant public. Hence, if particular name the natural person claimed has already established stable corresponding relationship with this nature person, it shall obtain the protection for the naming right, even if the corresponding relationship does not achieve the extent of “sole correspondence”. The court does not support the “sole corresponding relationship” claimed by the Trademark Review and Adjudication Board because it is too harsh.To sum up, the court believes that when article 31 of the Trademark Law regarding “[n]o trademark application shall infringe upon another party’s existing prior rights” is applied, and the natural person claimed protection for the naming right for particular name, this name has to satisfy 3 requirements: This name must have certain reputation and is well-known to relevant public;The relevant public use this name to refer to this natural person;This particular name has already established stable corresponding relationship with this natural person.Whether foreigners can claim protection for naming right on part of his or her foreign name’s translated Chinese name.The court holds that the relevant public in China gets used to referring to and calling the foreigner with his or her Chinese name, which is part of foreigner name’s Chinese translation. Many Chinese will not use the full translated version of original foreign name, and sometimes are not familiar with or do not even know the full translated Chinese name, because of the language and culture difference as well as the convenience to call. Hence, it is necessary to take relevant public’s appellation habit into account when judging whether the foreigner can claim protection for naming right on part of his or her foreign name’s translated Chinese name. In this case, both “乔丹” as claimed by the retrial applicant, or “迈克尔.乔丹”, as wrongfully determined by Trademark Review and Adjudication Board as the retrial applicant’s full name in the sued adjudication, are part of the retrial applicant’s full English name’s (Michael Jeffrey Jordan) translated Chinese name. These two names are all used by the relevant public to call or refer to the retrial applicant. The court does not support Qiao Dan Inc’s claim that simple family name or its translation cannot be the object for the naming right. 2.3 Evidence in this case can prove that “乔丹” as claimed by the retrial applicant satisfies 3 requirements previously elaborated by this court, hence the retrial applicant has the naming right on “乔丹”.2.3.1 In the light of the evidence submitted by the retrial applicant, many articles in China’s newspapers, periodicals, websites regarding the retrial applicant, and many books and special journals have used “乔丹” to refer to the retrial applicant. These evidences can prove that relevant public in China, and China’s mass media extensively used “乔丹” to indicate the retrial applicant, and “乔丹” has already established stable corresponding relationship with retrial applicant. Firstly, from June 26, 1984, to May 22, 2010, influential and important newspaper in China, namely People’s Daily, Reference News, Economic Daily, published 282 articles about the retrial applicant, for instances 《乔丹获“冠中冠”称号》（Qiao Dan Win the Award of “Champion of Champions”）, 《乔丹迈入名人堂》（Qiao Dan Joined the Celebrity Circle） and etc. From June 1985 to January 2012, around 1376 articles about the retrial applicant like 《天王一对一 乔丹VS 科比》（King&King Qiao Dan VS Kobe）,《与乔丹的故事》(Stories about Qiao Dan) were published in sports , news, operating management, study, education periodicals. Most articles used “乔丹”, and others used “飞人乔丹”（Flying Man Qiao Dan），“迈克尔.乔丹”(Chinese translation of Michael Jordan), “飞人”（Flying Man）to refer to the retrial applicant when the article title involves the retrial applicant. Secondly, from 1984 to 2011, 26 kinds of books and monographs related with the retrial applicant published and issued articles like 《乔丹写真集》(Qiao Dan’s Photo Album),《最后的乔丹》(Last Qiao Dan) and etc. Within these books and monographs, 14 books names or monographs names used “乔丹” to refer to the retrial applicant, and 7 books names or monographs names used “迈克尔.乔丹”(Chinese translation of Michael Jordan) to refer to the retrial applicant. Thirdly, in October 2015, on , China News, Shanghai Hotline, China Daily, Netease and other influential websites, articles like 《中国赛成神秘乔丹行 众人不惜血本只为朝圣》(Chinese Basketball Game Became A Mysterious Trip for Qiao Dan. Many People Spends A Lot for This Pilgrimage ), 《NBA中国赛乔丹成主角 篮球之神让比赛成配菜》 (Qiao Dan Became the Hero for NBA China. The God of Basketball Takes the Shine off the Game ),《乔丹代表一代人青春 沪媒：这一夜只属于篮球之神》(Qiao Dan is a Symbol for the Youth of This Generation. Shanghai Press: This Night is Only for the God of Basketball) were published about the retrial applicant’s business trip in China. Most of these article titles used “乔丹” to refer to the retrial applicant.2.3.2 In the first instance’s trial record, Qiao Dan Inc. admitted that “乔丹” has association with the retrial applicant, but it maintained that this kind of association is not “sole” or “only“. Qiao Dan Inc. also admitted that related public in China used “乔丹” to refer to the retrial applicant, but when one mentions “乔丹”, these two words does not necessarily refer to the plaintiff (retrial applicant). In the first instance, the court asked Qiao Dan Inc., “Are there anyone else who also used ‘乔丹’ besides Qiao Dan Inc. in mainland China? Have they obtained persistent influence and reputation in mainland China?” Qiao Dan Inc. replied, “In the evidence we submitted, no. After our registration, this kind of thing is impossible. Besides, we have not found this kind of thing before the disputes. ” 2.3.3 In Qiao Dan Inc.’s prospectus, the “Brand Risk” part gave clear indication “[a]ttention to Investors: Some consumers may relate the issuer and its products with Michael Jordan thereby facing misunderstanding or confusion. Here we gave our special notice to investors.” It is clear that Qiao Dan Inc. also realized that the related public may relate the retrial applicant with “乔丹”.2.3.4 Two survey reports can further prove that the related public used “乔丹” to refer to the retrial applicant, and “乔丹” has already established stable corresponding relationship with the retrial applicant. Firstly, reasons about why the court admitted these two survey reports are listed as below. The fact as well as the application of the law in this case is closed related with the related public’s recognition and knowledge. Hence, objective, fair, normative, transparent market survey is helpful for the court to make clear about the public’s real recognition on “乔丹”. According to the survey facts, two survey reports were made by Horizon Research Consultancy Group. The survey was done in Beijing, Shanghai, Guangzhou, Chengdu, Changshu to obtain ordinary consumer’s recognition about the relationship between Qiao Dan brand and the retrial applicant. These two survey reports’ survey procedure was notarized by Beijing Chang’an Notary Public Office and Shanghai Oriental Notary Public Office. These two offices made detailed explanation to the interviewees’ composition, survey method, sampling method, procedure for producing the survey conclusion and etc. “Technical Specification”, “Questionnaire”, and “Cards” for questions are also attached to the survey reports. Hence, this survey conclusion has high authenticity and strong probative force. It can be used together with other evidences in this case to prove related facts. Although Trademark Review and Adjudication Board and Qiao Dan Inc. impeached these two reports, they neither provide disproof, nor gave any sound objection reason. Hence, the court does not support their claims here. Second, content about the survey reports are as below. Two survey reports shows, when interviewees were asked “what will you firstly refer to when one mentions ‘乔丹’?”, 85% and 63.8% of interviews replied respectively that they came up with the retrial applicant, and 14.5% and 24% of interviewees answered that they came up with “Qiao Dan Sports”. This survey data can inter-prove other evidences admitted by this court, and demonstrated that the related public often use “乔丹” to refer to the retrial applicant, and“乔丹” as well as the retrial applicant has already established stable corresponding relationship.To sum up, current evidence in this case already prove that “乔丹” enjoys considerable reputation and was well-known to the related public. Generally speaking, the related public China used “乔丹” to refer to the retrial applicant, and “乔丹” and the retrial applicant have already established stable correspondence. Hence, the retrial applicant has the naming right on “乔丹”.Qiao Dan Inc. believes that there are other natural persons in China also named “乔丹” and some press also use “乔丹” to refer to other foreigners, therefore the retrial applicant cannot have the naming right on “乔丹”. The court holds that although some other natural persons also have their original name or Chinese translated name as “乔丹” or include words “乔丹”, they are not extensively known by the public. No evidence showed that related public in China extensively know or relate other natural persons with “乔丹”. In particular, in the first instance’s trial record, Qiao Dan Inc. also admitted that besides Qiao Dan Inc. and the retrial applicant, no one else “obtained persistent influence and reputation in mainland China.” Therefore, the court does not support Qiao Dan Inc.’s claim here. Qiao Dan Inc. also maintained that the retrial applicant had already exclusively licensed the property right and interest on his name to Nike Inc., hence he does not have the right to claim property right and interests on the naming right. The court holds that the naming right is a kind of personal right. Although the naming right can include economic interest, for instance the right owner can license his or her name to others to make commercial exploitation, the naming right itself cannot fully be separated from the right owner, and cannot be fully transferred. Hence, even if the retrial applicant exclusively licensed his name to Nike Inc. to make commercial exploitation, he can still enjoy the naming right by himself, and is entitled to independently require application revocation. Therefore, the court does not support Qiao Dan Inc.’s claim here.How well-known is the retrial applicant in China, and what is the extent of the fame?In this case, correct determination about how well-known is the retrial applicant in China, and what is the extent is very significant for the court to determine the following issue: whether the retrial applicant can enjoy the naming right on “乔丹”; whether Qiao Dan Inc. has obvious subjective malice on its registration of the disputed trademark; whether the related public would mistakenly associate commodities with disputed trademark with the retrial applicant. The court holds that the evidence in this case can prove that before the disputed trademark’s application date, until 2015, the retrial applicant consistently enjoyed high reputation in China. He is not only well-known in basketball circle, but also become a high profile public figure. Reasons are as below:3.1 As previously mentioned, the retrial applicant submitted evidence including 1658 articles about himself on China’s related newspapers, periodicals, as well as 26 kinds of books and monographs. Although some articles were mainly about the retrial applicant’s sports activities, the mass media types were not limited to sports periodicals like Modern Sports, Basketball and etc. Types also include news, operation management, study, education and other kinds of periodicals. In particular, some very influential and authoritative newspapers including People’s Daily, Reference News, and Economic Daily also made extensive and continuous news report to the retrial applicant. Take into account the authority, type, scope as well as age of the audience of the mass media, and the publish date, number and content of related articles, together with a large number of books and monographs about the applicants, it is clear that current evidence can already prove that the retrial applicant enjoyed high reputation in related public in China, and his fame is no longer limited to basketball field.3.2 In 2015, around the time when the retrial applicant visited China, , China News, Netease and other famous Chinese websites published many articles about retrial applicant’s participation in related business activities. These reports can prove that currently, the retrial applicant still enjoys great reputation in China. Judging from the words used in these articles, for instance “Many People Spends A Lot for This Pilgrimage”, “the God of Basketball”, “a Symbol for the Youth of This Generation” and other emotional dictions. Even if some exaggeration rhetoric has been used, it is evident enough that the retrial applicant still enjoys great fame in related public in China.3.3 Two survey reports can further prove the extent and degree of the retrial applicant’s reputation. According to these two survey reports, interviewees are around 28 to 60 years old, and are local residents who lived in surveyed area for more than 2 years. The population distribution characteristic of this survey is consistent with that of the 6th National Census in 2010. When interviewees were asked “what will you firstly refer to when one mentions ‘乔丹’? ”, 85% and 63.8% of interviews replied respectively that they came up with the retrial applicant. Hence, interviewees and data of two survey reports can further prove that retrial applicant is extensively well-known in China, and his reputation was not limited to basketball field.3.4 Besides retrial applicant’s endorsement for “AIR JORDAN” series of Nike Inc., he also endorsed the drink “Gatorade”, the underwear “Hanes”, the cornmeal “Wheaties Box”, and other commodities which have no direct relationship with basketball. Endorsement activities actually show that retrial applicant’s image and reputation have already been extensively recognized by related commodity operators. Meanwhile, the related public can also have more chance to know and come into contact with the retrial applicant by advertisement and mass media thereby further enhancing and expanding retrial applicant’s reputation in China.Whether the retrial applicant and his authorized party Nike Inc. have actively used “乔丹”? What is the influence of this fact on the retrial applicant’s claimed naming right.Firstly, the court holds that, according to paragraph 1, article 99 of the General Principles of Civil Law, “Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited.” Therefore, “use” is one of right owner’s right, rather than right owner’s duty. Moreover, “use” is not the legal prerequisite for the right owner to prohibit others from interfering, usurping, false representing his or her personal names; it is not the precondition for the right owner to claim the protection for his or her naming right. Secondly, when article 31 of the Trademark Law is applied to protect other people’s prior rights, whether related public would easily be confused to mistakenly associate the commodities or service, which has disputed trademark on, with this natural person’s endorsement and license, is an important factor for the court to determine whether disputed trademark’s registration will infringe this natural person’s naming right. Hence, according to article 31 of the Trademark Law, when three requirements for the protection of naming right, as previously mentioned, are satisfied, natural person are entitled to obtain protection for the naming right even if he or she has not actively used the name. This solution is not only beneficial for the natural person to protect his or her dignity, and economic value in his or her name, but also good for preventing related public from confusion. Consumer’s legitimate right and interest can be protected.Last but not least, the retrial applicant is an U.S. citizen. For foreigners who enjoyed considerable reputation in China, this person or related interest group may have not actively used their names. Sometimes, related public, mass media in China may use or be familiar with the name which are not the same with the name this person actively used, due to the appellation and language habit, as well as culture difference. For instance, in this case, related public and news media in China extensively use “乔丹” to refer to the retrial applicant, but the retrial applicant, and Nike Inc. use “迈克尔.乔丹” to stand for retrial applicant. Both “迈克尔.乔丹” and “乔丹” enjoy high reputation in related public, and are both extensively used to refer to the retrial applicant. Besides, the retrial applicant never make objection about the above fact. Hence, the court does not support Trademark Review and Adjudication Board and Qiao Dan Inc.’s claim that retrial applicant does not have naming right because retrial applicant and Nike Inc. have never actively used “乔丹”.Whether the disputed trademark’s specific circumstance misled the relevant public to falsely relate the disputed trademark with the retrial applicant;The specified commodity type for the disputed trademark, No.6020569“乔丹” band, is type 28, namely “apparatus for physical exercises, swimming pool (for entertainment), roller skates, decoration to Christmas trees (except light-fixtures and Candies)”. “apparatus for physical exercises, swimming pool (for entertainment), roller skates” are all common commodities in sports, and “Christmas trees (except light-fixtures and Candies)” are common commodities in daily life. The court holds that related public can easily be confused to associate commodities, which have disputed trademark with retrial applicant’s license and endorsement. Reasons are as below:First, evidence in this case can already prove that retrial applicant and his name “乔丹” have established long term and extensive reputation in China. Meanwhile, related public extensively used and were already used to using “乔丹” to refer to retrial applicant. “乔丹” and the retrial applicant have established stable correspondence relationship. The disputed trademark only includes words “乔丹”, hence when related public see the trademark, they may soon associate it with retrial applicant. Consequently, the related public may mistakenly regard that the commodity with disputed trademark has particular relationship with the retrial applicant’s license and endorsement.Besides, In Qiao Dan Inc.’s prospectus, the “Brand Risk” part gave clear indication “[a]ttention to Investors: Some consumers may relate the issuer and its products with Michael Jordan thereby causing misunderstanding or confusion. Here we gave our special notice to investors.” This notice shows that Qiao Dan Inc. has already realized that related public may easily associate “乔丹” with retrial applicant thereby facing confusion. In the first instance’s trial record, Qiao Dan Inc. also admitted that “it is possible that some people who have not bought our products may made such association.” Last but not least, two survey reports together with other evidences can further prove that related public may easily be misled to associate “乔丹” with retrial applicant. Two survey reports show that 68.1% and 58.1% of interviewees respectively think that retrial applicant has association with “乔丹体育”. As for interviewees who have bought commodities branded “乔丹体育”, 93.5% and 78.1% of the interviewees respectively hold that retrial applicant is related with “乔丹体育”. When it comes to the specific relationship between “乔丹体育” and the retrial applicant, interviewees believe that the relationship may be endorsement, authorization of the name, the enterprise operator and etc. (results list by proportion; from high to low) Although the above survey data is aimed at the related public’s recognition between retrial applicant and “乔丹体育”, these two survey reports can still further prove that related public can be easily misled to associate disputed trademark with the retrial applicant, because “乔丹体育” is the trademark owner of the disputed trademark, and two words “乔丹” are the most distinguish part in the term “乔丹体育” while other two words“体育” are too ordinary to distinguish the source of goods.Whether Qiao Dan Inc. has manifest subjective malice on the registration of the disputed trademark.In this case, whether Qiao Dan Inc. has obvious subjective malice on the registration of the disputed trademark is a very significant factor for the court to determine whether the disputed trademark’s registration would infringe retrial applicant’s naming right. The court holds that evidence in this case can prove that Qiao Dan Inc. registered a lot of trademarks closely related with the retrial applicant when Qiao Dan Inc. was fully aware of the reputation of retrial applicant and his name “乔丹”. Qiao Dan Inc. had not consulted or negotiated with retrial applicant to obtain license or authorization. Instead, it enjoyed retrial applicant’s “endorsement” with few cost, and was permissive to the damage result that the related public mistakenly associate commodities, which has disputed trademark on, with retrial applicant. Qiao Dan Inc.’s action goes against principle in article 4 of General Principles of Civil Law. Its action shows manifest subjective malice. Specific reasons are listed as below:First, from 1984 to 2015, retrial applicant enjoyed long term and extensive reputation. Related public in China mainly use “乔丹” to refer to the retrial applicant. Qiao Dan Inc.’s original name is “福建省晋江市陈埭溪边日用品二厂”（ Fu Jian Province Jin Jiang City Chen Dai Xi Bian Commodity Factory II）. This name has nothing to do with “乔丹”, but was changed to “晋江市乔丹体育用品有限公司”（Jin Jiang City Qiao Dan Sports Commodity Inc.）in September 2000, and then renamed with current name in December 2009. Qiao Dan Inc.’s main business are “design, production and sale of sports shoes, sportswear, sports accessories.” The business is highly related with retrial applicant’s profession, and should have considerable knowledge of the retrial applicant and his reputation. In fact, Qiao Dan Inc. clearly admitted in first instance’s trial record that it did register (the disputed trademark) when they are aware of the (retrial’s) reputation.Secondly, as for the reason why Qiao Dan Inc. used “乔丹” to register the disputed trademark, Qiao Dan Inc. gave three totally different explanations in the court’s hearing, in the first instance, and in the Second Intermediate People’s Court of Shanghai’s trial about the lawsuit between retrial applicant and Qiao Dan Inc. on the infringement of naming right disputes. These explanations, for instance “乔丹” meanings “southern grass and trees” or “wonderful” or “general meaningful of good will”, or “when Qiao Dan Inc. was only a village-run enterprise, the company asked the local trademark agency in Jin Jiang City to come up names, and ‘乔丹’ is one of these proposed names”, can hardly convince the court because it obviously runs counter to the common sense and lacks factual basis. Hence, Qiao Dan Inc. cannot give a justified and reasonable explanation for using “乔丹” to register the disputed trademark.Lastly, besides the registration for this disputed trademark, Qiao Dan Inc. and other related companies have successively registered a series of trademarks closely related with retrial applicants. These registrations further showed the subjective malice of Qiao Dan Inc. These trademarks includes: 1. Qiao Dan Inc. registered a number of trademarks on Qiao Dan’s two children’s names, namely “杰弗里.乔丹”（Chinese Translation of “Jeffrey Jordan”）, “马库斯.乔丹” （Chinese Translation of “Marcus Jordan”）, and these two names’ Chinese Pinyin. Qiao Dan Inc.’s controlling shareholder, Fu Jian Bai Qun Company, the party not involved in this case, applied for 16 trademarks on “杰弗里”（Chinese Translation of “Jeffrey”）, “马库斯”（Chinese Translation of “Marcus”）,”JIEFULI”(Chinese Pinyin of “杰弗里”), “MAKUSI”(Chinese Pinyin of “马库斯”) respectively. 2. Qiao Dan Inc. used the picture , which has the same body shape as that of retrial applicant’s basketball playing picture published on NBA PICTORIAL in 1998, as elements for independent trademark registration, or as elements to combines with “乔丹”, “QIAODAN”, or the retrial applicant’s basketball jersey number 23 to register a number of trademarks. The affiliated company, Mai Ke Company, use image in Nike Inc.’s No.643806 trademark, and No.4932232 trademark to apply for a composed mark, No.1407911 trademark.As for NBA team LAKERS, Qiao Dan Inc.’s affiliated company Hu Ren Dui Sports Company applied for the registration of No.1905046, No.1967177, and No.2009309 “LAKERS TEAM” trademark as well as No.1905050, No.1967878, and No.1961198 “湖人队 HURENDUI” （LAKERS TEAM’s Chinese translation and its Chinese Pinyin）trademark. Meanwhile, this company also used “湖人队”（Chinese translation of LAKERS TEAM）as enterprise name. Based on the facts listed above, Qiao Dan Inc.’s use of “乔丹”, as a disputed registration trademark, is not an happenstance or an isolated event. Instead, it is only one of the examples that Qiao Dan Inc. and other affiliated companies registered a series of related trademarks on retrial applicant when they are fully aware of retrial applicant’s high reputation. Qiao Dan Inc. has no prior right on retrial applicant’s name “乔丹”, and his basketball jersey number “23”, and particularly names of retrial applicant’s two children’s names. Qiao Dan Inc. and the Trademark Review and Adjudication Board’s claim that Qiao Dan Inc.’s action is a kind of renewal registration or defensive registration has no factual and legal basis, hence the court does not support such claim.7. What do Qiao Dan Inc.’s operation condition, its efforts in related trademarks’ publicity and use, as well as its related trademarks’ awarded prizes and received protection influence this case.The court holds that Qiao Dan Inc. did achieve a relatively large scale, and has large market share as well as considerable reputation in related business after years of operation, according to the first instance court and this court’s ascertained facts. In No.9 Civil Judgment, final trial, 2002, this court has determined that “sneakers packaged by Fujian Province Qiao Dan Sports Co., Ltd.’s prior used shoe boxes are well-known commodities, and the decoration for these shoe boxes is well-known commodity’s distinctive decoration.” In June, 2005, Qiao Dan Inc.’s No.870 trademark has been affirmed by the Trademark Office as well-known marks on commodities of sneakers and sportswear. Besides, Qiao Dan Inc. has also done extensive advertisement, sponsored sports games, philanthropy and other activities with impressive investment and effort. However, the above fact cannot influence the court’s determination that disputed trademark’s registration infringed retrial applicant’s prior naming right. Reasons are listed below:First, judging from the right’s nature, as well as the constitutive requirements for infringing prior naming right, the name is used to refer to, call, and distinguish specific individuals, and the naming right is personal right enjoyed by individuals on his or her name. Trademark’s main function is to distinguish the commodities or source of goods. It is a kind of property right which has different nature from the naming right. As previously mentioned, the key for determining whether disputed trademark’s registration harms other people’s prior naming right is whether this trademark will easily misled the associate public to mistakenly relate commodities, which have disputed trademark on, with the retrial applicant’s endorsement, license and etc. In fact, Qiao Dan Inc.’s use of retrial applicant’s basketball jersey number “23”, name of retrial applicant’s two children, and other registration trademarks closely related with retrial applicant, shows that Qiao Dan Inc. turned a blind eye to the damage result. Hence, the court does not support Trademark Review and Adjudication Board’s claims which fails to affirm that 乔丹’s correspondence relationship with retrial applicant is obviously stronger than relationship with Qiao Dan Inc., and meanwhile falsely determined that retrial applicant does not enjoyed naming right on “乔丹”, and related public will not be misled and etc. Secondly, the specified commodity type for the disputed trademark is type 28, namely “apparatus for physical exercises, swimming pool (for entertainment), roller skates, the decoration of Christmas trees (except light-fixtures and Candies).” Qiao Dan Inc. does not submit evidence to show that the publicity and use of the disputed trademark on above mentioned commodities thereby proving that disputed trademark enjoyed high reputation or distinctiveness. Moreover, the mentioned commodities above are somewhat different from Qiao Dan Inc.’s main business, namely “the design, production and sale of sneakers, sportswear, and sports accessories.” Therefore, the court can hardly determine that disputed trademark has high reputation or distinctiveness on disputed trademark’s specified commodity type.Lastly, according to article 4 of the General Principles of Civil Law, “In civil activities, the principles of ….. honesty and credibility shall be observed.” Qiao Dan Inc. applies for the registration of the disputed trademark in bad faith. It harms the retrial applicant’s prior naming right and accordingly goes against the principle of honesty and credibility. Hence, Trademark Review and Adjudication Board and Qiao Dan Inc.’s claim on market order or business success is actually not totally the legitimate outcome under Qiao Dan Inc.’s honest operation and efforts, but is to some extent, an achievement based on related public’s misidentification. Safeguarding this kind of market order or business success is not only harmful to the protection of the right owner’s legitimate interest on the naming right, but also unfavorable to consumers’ interest or the purification for the environment of trademark registration and use.Based on the above reasoning, the court holds 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. 8.Whether the retrial applicant is remiss in protecting its claimed naming right, and what is the influence of this factor in this case.According to Article 41, paragraph 2, “If a trademark that has been registered violates the provisions of …..Article 31 of this Law, the owner or the interested persons of the trademark may, within 5 years from the day on which the trademark is registered, request the Trademark Review and Adjudication Board to revoke that registered trademark.” The court holds that “within 5 years from the day on which the trademark is registered” is a statutory period to request the Trademark Review and Adjudication Board to revoke the registered trademark. Legislators have fully considered the interest balance between the prior right owner and the trademark right owner when they prescribed this period. This period can urge the right owner or interested party to claim rights timely thereby avoiding the circumstance that disputed trademark’s legal validity remains debatable long after trademark’s registration has been affirmed. Otherwise, trademark right owner’s publicity and use of disputed trademark will be influenced, and trademark right owner’s legal rights and interests will be harmed. In this case, retrial applicant requested the Trademark Review and Adjudication Board to revoke the registered trademark within 5 years from the day on which the trademark is registered. This request is in accordance with the law. Hence, the Trademark Review and Adjudication Board, and Qiao Dan Inc.’s claim that the retrial applicant was remiss in protecting his right of the name has no factual and legal basis, and the court does not support such claim.To sum up, according to article 31 of the Trademark Law, prior rights includes other person’s existing right of the name he or she enjoyed before the disputed trademark’s application date. Retrial applicant has the prior right of the name on the disputed trademark “乔丹”. Qiao Dan Inc. used “乔丹” to apply for the registration of disputed trademark when it was fully aware of the high and long term reputation in China. This registration application will easily misled the related public to mistakenly associated the commodities, which have disputed trademarks on, with the retrial applicant’s license and endorsement, thereby infringing the retrial applicant’s prior naming right. Qiao Dan Inc. has manifest bad faith in the disputed trademark’s registration. 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. Therefore, the disputed trademark’s registration violates article 31 of the Trademark Law, and should be revoked according to article 41, paragraph 2 of the Trademark Law. The Trademark Review and Adjudication Board should remake adjudication on the disputed trademark.As for the issue whether disputed trademark’s registration belongs to the circumstance listed in article 10, paragraph 1(8), namely “[t]hose detrimental to socialist morals or customs, or having other unhealthy influences”, the court holds that disputed trademark will not cause passive or negative influence to China’s politics, economy, culture, religion, nation and other social public interest and public order. Therefore, the court does not support the retrial applicant’s proposed retrial reason that disputed trademark’s registration violates article 10, paragraph 1(8) of Trademark Law. As for the issue whether disputed trademark’s registration belongs to the circumstance listed in article 41, paragraph 1 of the Trademark Law, namely “the registration of the trademark is obtained by deceitful means or other illicit means”, the court holds that disputed trademark’s registration is not actions which may disturb the market order, harm public interest, unreasonably occupy public resource, or seek profits in other means. Disputed trademark’s registration does not belong to the “other illicit means”, as listed in article 41 of the trademark law. Retrial applicant has not submitted evidence proving that disputed trademark’s registration is obtained by deceitful means or other illicit means. Hence, the court does not support retrial applicant’s retrial reason that disputed trademark’s registration violates article 41, paragraph 1 of the trademark law.Based on the above reasoning, the court holds that determination of facts and application of law in the sued adjudication and first instance judgment are erroneous, and should be revoked. The second instance judgment erroneously sustained the first instance judgment, and did not review the appeal reason proposed by retrial applicant about disputed trademark’s violation of article 31 of Trademark Law. This judgment should be also revoked. After the court judicial committee’s discussion, judgment is as below, according to article 4, and article 99 of General Principles of the Civil Law of the People's Republic of China, article 2 and article 20 of Tort Liability Law of the People's Republic of China, article 10, paragraph 1(8), article 31, article 41 of the Trademark Law of the People's Republic of China (2001 Amendment), article 6, paragraph 2 of Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition, article 70 and article 89, paragraph 1(2) of the Administrative Litigation Law of the People's Republic of China , and article 76, paragraph1, and article 78 of the Interpretation of the Supreme People's Court on Several Issues concerning the Enforcement of the Administrative Litigation Law of the People's Republic of China :Revoke Beijing First Intermediate Court’s No.9163 Administrative Judgment in 2014 (Administrative, Intellectual Property, First Trial, 2014).Revoke Beijing High People’s Court’s No.1915 Administrative Judgment in 2015 (Administrative, Intellectual Property, Final Trial, 2015)Revoke Trademark Review and Adjudication Board of State Administration of Industry and Commerce’s No.052058 (2014) adjudication on No.6020569 disputed trademark “乔丹” .Trademark Review and Adjudication Board of State Administration of Industry and Commerce shall remake adjudication to No.6020569 disputed trademark “乔丹”.The court acceptance fee for the first instance is 100 RMB, and the court acceptance fee for the second instance is 100 RMB. The entire court acceptance fee shall be paid by Trademark Review and Adjudication Board of State Administration of Industry and Commerce.This is the final judgment. Chief Judge: Tao Kaiyuan Judge: Wang Chuang Judge: Xia Junli Judge: Wang: Yanfang Acting Judge: Du Weike December 7, 2016 Court Clerk: Bao Shuo Court Clerk: Zhang Bo The Supreme People’s Court of the People's Republic of China (Sealed) Translation ver 1.1 (Posted January 6, 2017) ................
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