HongFangLaw ~ Chinese IP Law Updates ~ n’ 62
31 July 2018
Celebrity’s Impact on Trademark Registration
Co-authors: Waker Xu, Shirley Lin
Michael Jordan is a household name referring to the basketball star that once shone on the court, however, its Chinese equivalent “乔丹” (read and written as “QIAO DAN”) has a different meaning. In China, this trademark is owned by sportswear manufacturers that are neither owned nor controlled by the former basketball player, nor does it have any license from the legend, yet they legally use the name. Agonizing over the alleged infringement upon his name, Michael Jordan has taken aim at a slew of “QIAO DAN” trademarks in various forms used by sportswear companies with the same brand name. His quest for protection has carried on for a few years and will continue its path, but the prospects are gloomy in the foreseeable future. And he may not be the only person that has to deal with this mess.
When the French team was carrying home the FIFA World Cup Trophy from the Luzhniki Stadium in Russia on July 15, 2018, they never would have expected what had been going on in the Far East as they strived for glory for their country and themselves on the field. Unbeknownst to them, their names were already applied for registration as trademarks on varying goods and services by individuals and companies that they have no ideas about or connection to. Accordingly, to the published Chinese trademark applications, 10 out of the 11 players in France’s starting line-up for the final of the 2018 FIFA World Cup Russia have seen their names in Chinese filed by others for trademark registration. Only Benjamin Pavard was spared for now, but just temporarily. The most exploited name points to no other but Kylian Mbappé, the most watched star athlete of this world cup. By the day of the final game, 159 trademark applications had been filed to own his name. Another member of the French team Samuel Umtiti was also subjected to the ‘name rush’. A corporate applicant has already filed “乌姆蒂蒂切尔西” (meaning “Umtiti Chelsea”), even though he has never played for the Chelsea Football Club that competes in the Premier League. Some might take it as a joke, but it would definitely not make even the jovial Kylian Mbappé laugh.
A takeaway from Michael Jordan’s fight for protection is that odds are against the athletes even if they dole out time and cash in the disputes. It is forbiddingly difficult for such individuals to secure protection of their names on grounds of their name rights alone. It is not surprising that cases like Michael Jordan’s will follow the players through to retirement as they are still being ruled. In China, pure trademark application (or even cybersquatting) is not illegal in itself and does not bear any actual legal liability. But it is not difficult to predict inevitable damages to a certain people’s rights including consumers’ rights to learn the truth should there be any improper practice in the registration system. Contrary to the low cost in trademark squatting, efforts required of individuals to seek for protection are disproportionately tremendous. It is high time that we take action to root up trademark squatting before any serious harm could be done.
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