According to the national enterprise credit information publicity system, on January 12, the name of Qiaodan Sports Co., Ltd. changed to Zhongqiao Sports Co., Ltd.
Two weeks ago, the Shanghai Second Intermediate People's Court rendered a first-instance judgment in the name dispute case of former American professional basketball player Michael Jordan, finding that Qiaodan Sports Company constituted infringement and should stop using the "Qiaodan" trade name and some trademarks involving "Qiaodan" in its corporate name.
From this point of view, Jordan Sports' name change is in the performance of the court's judgment. Some intellectual property experts told Nandu reporters that it is more meaningful for Qiaodan Sports to choose to rebuild a new brand and new brand name as soon as possible than to invest a lot of money in a brand with a risk of infringement.
Two weeks ago, the Shanghai Second Intermediate People's Court ordered the suspension of the use of the "Qiaodan" business name
The predecessor of Qiaodan Sports is "Jinjiang ChendaiXibian Daily Necessities Factory No. 2 in Fujian Province", which was established in 1984 and renamed "Qiaodan Sports Co., Ltd." in June 2000, using "Qiaodan" as the enterprise name. Since 1997, Qiaodan Sports has registered a series of trademarks about "Qiaodan", including clothing, shoes and hats, fitness equipment, leather and leather goods, advertising sales, etc.
According to industrial and commercial information, the legal representative of Qiaodan Sports is Ding Guoxiong, with a registered capital of 450 million yuan. The company's business scope is the design and development, production and sales of sports shoes, sportswear, hats, socks, non-medical daily protective masks, etc.
The dispute between Jordan Sports and star Jordan has a long history. In December 1993, Michael Jordan signed an endorsement agreement with Nike and signed a power of attorney in October 2012 confirming Nike's right to use his name, photograph, portrait, etc. Based on this, Nike launched a sneaker brand - Flying Man Jordan (Air Jordan).
In February 2012, Michael Jordan filed a complaint against Qiaodan Sports and Bailing Trading Company, which sells its products, to the Shanghai No. 2 Intermediate People's Court for infringement of the right to a name. The lawsuit has been fought for more than eight years, during which there have been several trials, and the verdict was reached at the end of last year.
On December 30, 2020, the Shanghai Second Intermediate People's Court pronounced a first-instance judgment on the case. The court found that the defendant, Qiaodan Sports, constituted infringement and was required to compensate the plaintiff for losses and reasonable expenses of the lawsuit of $350,000, and publicly apologized to clarify the relationship with the plaintiff, Michael Jordan.
At the same time, the court demanded that Qiaodan Sports stop using the "Qiaodan" trade name and the trademark involving "Qiaodan" in its corporate name within 30 days from the effective date of the judgment. However, for trademarks involving "Qiaodan" that exceed the dispute period of five years, a reasonable manner, including distinctive marks, should be used to indicate that they have no connection with the plaintiff.
On January 12, 2021, two weeks after the court announced the judgment, "Qiaodan Sports Co., Ltd." changed its name to "Zhongqiao Sports Co., Ltd."
Jordan Sports was changed to Middle Joe Sports.
Li Junhui, a special researcher at the Intellectual Property Research Center of China University of Political Science and Law, told Nandu reporters that the dispute between American basketball star Michael Jordan and China Qiaodan Sports Company mainly includes two parts: one is a trademark infringement dispute, that is, the use of a trademark containing the word "Qiaodan"; the other is a dispute over the name of qiaodan sports, that is, qiaodan sports contains the word "jordan" in the company name.
"Now that the court has ordered Qiaodan Sports to stop using the font size and trademark containing the word 'Qiaodan', then on the whole, Qiaodan Sports does not need to stick to the character of 'Qiaodan', and it is more meaningful to choose to rebuild the new brand and new brand name as soon as possible." Li Junhui said.
Why is the "Jordan" trademark infringing? Cause public misidentification
Why the name Jordan?
Qiaodan Sports once explained to the court that the source of the use of "Qiaodan" as a trade name and trademark comes from the "Shang Shu Da Biography Volume (IV)", "The Sun of the Southern Mountains has a wooden yan, the name 'Qiao'", and the ancient Five Elements say "The south belongs to fire, fire color Dan". And emphasizing that Jordan mainly means Jordan, followed by a common surname in the United Kingdom and the United States, michael Jordan should not enjoy the right to a name in the legal sense of China.
In response to several issues in this case, the Shanghai Second Intermediate People's Court issued a special document to explain the doubts. The court held that Qiaodan Sports Company, despite Michael Jordan's high popularity, still chose to register the trademark Chinese the word "Qiaodan" without authorization, and registered the "Qiaodan" trade name.
In addition, Jordan Sports also registered Michael Jordan's former jersey number "23" and the Chinese translations of his two sons, Marcus Jordan and Jeffrey Jordan, as trademarks, which are very obvious and sufficient to determine that they have the intention to cause or allow confusion among the public. The above-mentioned acts also objectively caused the consequences of public misidentification and the plaintiff's mental distress, which had a causal relationship, so it was found that Qiaodan Sports Company's behavior violated the plaintiff's right to a name.
Nandu reporters reviewed the judgment and found that a major point of contention in this case was whether the plaintiff's request to Jordan Sports Company no longer use the plaintiff's name to achieve the purpose of stopping infringement had a legal basis.
On the question of whether the "Qiaodan" firm should cease to be used, the court cited the Provisions on the Administration of Enterprise Name Registration, stating that the enterprise name must not contain content and words that may deceive or misunderstand the public. The Measures for the Implementation of the Administration of Enterprise Name Registration further stipulate that if a registered enterprise name causes deception or misunderstanding to the public in use, or harms the legitimate rights and interests of others, it shall be found to be an inappropriate enterprise name and corrected.
To this end, the Shanghai Second Intermediate Court ordered Qiaodan Sports Company to stop using "Qiaodan" as the business name of the enterprise. This time Qiaodan Sports changed its name to Zhongqiao Sports, it is not difficult to understand that it is to fulfill the court's judgment.
Zhao Huachang, a lawyer at Xize Law Firm, told Nandu reporters that the original business name of Qiaodan Sports Company was "Qiaodan". According to the court judgment, this trade name must be changed, and it is too unwise to invest a lot of money in a brand (trademark, trade name, etc.) that is at risk of infringement.
Some "Qiaodan" trademarks are not revokable according to law, but they need to be marked differently
It is worth mentioning that the Shanghai Second Intermediate Court did not order Qiaodan Sports to completely stop using the "Qiaodan" registered trademark. Unlike registered business names, trademark registration also involves provisions on the period of dispute.
The Trademark Law stipulates a dispute period of 5 years for registered trademarks, beyond which the registered trademarks cannot be revoked according to law. In view of the legislative purpose of this article, Zhao Huachang explained to the Nandu reporter that the prior rights holder has long acquiesced or allowed a subsequent trademark to be registered without filing an invalidation declaration, and the subsequent trademark registrant invested and publicized based on the trust that "it will not be invalidated", and condensed into corresponding goodwill.
"If the invalidation is allowed to be made again, it is contrary to the principle of good faith and is not conducive to the protection of stable interests in law." Therefore, according to the Trademark Law, if a trademark is registered for more than 5 years, even if the registered trademark infringes the prior right, it will not be invalidated. Zhao Huachang said.
The court mentioned in the judgment that once Qiaodan Company was directly ordered to stop these trademarks in a name right dispute, it would disappoint the legislative purpose of the Trademark Law on the 5-year dispute period for registering trademarks.
At the same time, the Shanghai Second Intermediate People's Court pointed out that the purpose of the defendant's registration and use of the "Qiaodan" trademark was to make the public associate and benefit from it, so under the premise that some of the "Qiaodan" trademarks were irrevocable, it ordered Qiaodan Sports Company to eliminate the acts directed at the plaintiff in a reasonable way, so as to block the association generated after the public was misled, which could also achieve the purpose of stopping the infringement.
In other words, the "Qiaodan" trademark that is still within the five-year dispute period was ordered by the court to stop using the "Qiaodan" trademark that infringed the plaintiff's right to a name, and the "Qiaodan" trademark that exceeded the five-year dispute period needed to be used in a standardized manner.
This line of thinking is consistent with the administrative ruling of the Supreme People's Court. In October 2012, Michael Jordan also filed an administrative lawsuit against the Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce, seeking to revoke 78 related registered trademarks of Qiaodan Sports. Later, the first and second instance trials lost one after another.
In March 2020, the Supreme People's Court rendered a final judgment, holding that the previous court's determination of facts and applicable law was wrong and should be revoked. At the same time, the trademark "Qiaodan + Graphics" on the 6020578 of the 25th class of clothing, shoes, hats and socks of Qiaodan Sports Company was revoked, and the State Intellectual Property Office was required to make a new ruling on the trademark.
Nandu reporter checked the China Trademark Network and found that the trademark has been shown to be invalid.
China Trademark Network shows that Trademark No. 6020578 has been invalidated.
A statement released by Qiaodan Sports on April 8, 2020 revealed that 74 trademarks registered for more than 5 years have won the lawsuit, including the 25 classes commonly used by the company Chinese the core trademarks of Qiaodan, graphics, and pinyin. If the registration period does not exceed 5 years, 4 trademarks will be re-ruled by the TRAB. The trademark in this judgment is a combination trademark of the company that has been registered for less than 5 years.
On December 31, 2020, Jordan Sports made a voice.
Recently, in response to the first-instance judgment of the Shanghai Second Intermediate Court, Qiaodan Sports also issued a response that since 2012, the administrative litigation on the Chinese qiaodan's "name right", after the retrial rulings of the first-instance, second-instance courts and the Supreme Court, qiaodan sports has been registered for more than 5 years and more than 70 trademarks have been given legal use rights. This civil judgment will not affect the Company's legal right to use the Chinese "Qiaodan" trademark.
Qiaodan Sports said that in the process of nearly 100 trademark dispute administrative litigations that lasted for nine years, the domestic and foreign media carried out tens of thousands of reports and dissemination, the public has been widely aware of and clearly distinguish the relationship between the two, and the company is also trying to avoid confusion through various measures.
Written by: Nandu reporter Li Ling