1. Personal name rights are personality rights of a natural person in his or her personal name, and may constitute the prior rights under the Trademark Law. Where the Chinese translation of the personal name of a foreign natural person meets the prescribed conditions, the foreign natural person may claim protection of the Chinese translation as a specific name in accordance with the relevant provisions on personal name rights.

2. Where a foreign natural person claims personal name rights protection in respect of a specific name, the specific name should meet the following three conditions: (a) the specific name has a certain level of popularity in China and is known to the relevant public; (b) the relevant public uses the specific name to refer to the natural person; and (c) a stable correlation has been established between the natural person and the specific name.

3. “Use” is one of the components of the personal name rights of a natural person, but is not a legal prerequisite for the natural person to claim protection of his or her personal name rights. A specific name is protected by law based on personal name rights, and even if a natural person does not proactively use it, it does not affect his or her claim in accordance with the provisions of the Trademark Law on prior rights.

4. Where a “trademark holder” that, in violation of the principle of good faith, maliciously applied for trademark registration to infringe upon the existing prior rights of others claims that the registered trademark is legal and valid on the grounds that its promotion and use of, winning of awards for, and protection of the trademark and other efforts have formed a “market order” or “commercial success,” the people's court should not uphold such claim.

1. Article 32 of the Trademark Law of the People's Republic of China (2013 Amendment) (Article 31 of the Trademark Law of the People's Republic of China (2001 Amendment) as applied in this case)

2. Article 4 and paragraph 1 of Article 99 of the General Principles of the Civil Law of the People's Republic of China

3. Articles 7 and 110 of the General Provisions of the Civil Law of the People's Republic of China

4. Paragraph 2 of Article 2 of the Tort Law of the People's Republic of China

The trademark administrative dispute case of Michael Jeffrey Jordan (retrial petitioner, hereinafter referred to as “Michael Jordan”) v. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (respondent, hereinafter referred to as the “TRAB”) and Qiaodan Sports Co., Ltd. (a third party in the original trial, hereinafter referred to as “Qiaodan Company”) involved the trademark of “乔丹” (No. 6020569) of Qiaodan Company, as approved for use on sports equipment, swimming pools (for recreation), roller skates, and Christmas tree decorations (excluding lighting and sweets) under class 28 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter referred to as the “Nice Classification”). The retrial petitioner alleged that the trademark contained the Chinese translation, “乔丹,” of his English personal name, which infringed upon the existing prior rights of others under Article 31 of the Trademark Law of the People's Republic of China (2001 Amendment) (hereinafter referred to as the “Trademark Law”), and therefore, requested the TRAB to revoke the disputed trademark.

The TRAB held that the trademark “乔丹” was different from “Michael Jordan” and its Chinese translation, “迈克尔·乔丹,” and because “Jordan” was a common surname in Britain and the United States, it was difficult to determine a sure correspondence between this surname and Michael Jordan. The TRAB ruled to maintain the trademark in dispute. The retrial petitioner then filed an administrative lawsuit against the TRAB's ruling with the First Intermediate People's Court of Beijing Municipality.

On April 1, 2015, the First Intermediate People's Court of Beijing Municipality entered an administrative judgment (No. 9163 [2014], Original, Administrative Division, Intellectual Property, First IPC, Beijing) to dismiss the claims of Michael Jordan. Michael Jordan appealed against the judgment of the court of first instance. On August 17, 2015, the Higher People's Court of Beijing Municipality entered an administrative judgment (No. 1915 [2015], Final, Administrative Division, Intellectual Property, HPC, Beijing) to dismiss Michael Jordan's appeal and uphold the original judgment. Michael Jordan then filed a retrial petition with the Supreme People's Court. After reviewing the case, the Supreme People's Court entered an administrative judgment (No. 27 [2016], Retrial, Administrative Division, SPC) on December 7, 2016, as follows: (a) the administrative judgment (No. 9163 [2014], Original, Administrative Division, Intellectual Property, First IPC, Beijing) of the First Intermediate People's Court of Beijing Municipality should be revoked; (b) the administrative judgment (No. 1915 [2015], Final, Administrative Division, Intellectual Property, HPC, Beijing) of the Higher People's Court of Beijing Municipality should be revoked; (c) the TRAB's ruling on the disputed trademark “乔丹” (No. 6020569) (No. 052058 [2014], Trademark Review and Adjudication, TRAB) should be revoked; and (d) the TRAB should enter a new ruling on the trademark “乔丹” (No. 6020569).

In the opinion of the Supreme People's Court, the issues in this case focused on whether the registration of the disputed trademark infringed upon the personal name rights claimed by the retrial petitioner in respect of “乔丹” and violated Article 31 of the Trademark Law (2001 Amendment), which provided that “no application for trademark registration may infringe upon the existing prior rights of others.” In its judgment, the main findings are as follows:

I. Legal basis for the retrial petitioner to claim protection of personal name rights

Article 31 of the Trademark Law provided that “no application for trademark registration may infringe upon the existing prior rights of others.” The prior rights that were specially provided for by the Trademark Law should be protected in accordance with the special provisions of the Trademark Law. The civil rights or interests legally owned by parties to civil legal relations prior to the application date of the disputed trademark that were not specially provided for by the Trademark Law but should be protected in accordance with the provisions of the General Principles of the Civil Law, the Tort Law, and other laws should be protected in accordance with the aforesaid general provision. Paragraph 1 of Article 99 of the General Principles of the Civil Law and paragraph 2 of Article 2 of the Tort Law both clearly provided that a natural person should legally have personal name rights. Therefore, the personal name rights may constitute the “prior rights” in Article 31 of the Trademark Law. Where the registration of the disputed trademark infringed upon the prior personal name rights of another person, it should be determined to have violated the provision of Article 31 of the Trademark Law.

A personal name is used to refer to, address, or distinguish a specific natural person, and the personal name rights are the important personality rights of a natural person in his or her personal name. With the continuous development of China's socialist market economy, it has become increasingly common for natural persons with a certain level of popularity to use their personal names for commercial purposes and obtain economic interests by endorsing specific goods or services under contracts. In the protection of others' prior personal name rights by the application of Article 31 of the Trademark Law, not only is the personal dignity of a natural person protected, but also the economic interests of the natural person in his or her personal name, especially the personal name of a celebrity, are protected. The registration as a trademark of the personal name of another person who has prior rights in his or her personal name without his or her permission may easily mislead the relevant public into believing that the goods or services bearing the trademark have any endorsement, license, or other specific connection with the natural person, and should be determined to have infringed upon another person's prior personal name rights and violated the provision of Article 31 of the Trademark Law.

II. Specific content of protection based on personal name rights claimed by the retrial petitioner

When a natural person claims personal name rights protection in respect of a specific name in accordance with Article 31 of the Trademark Law, the following necessary conditions should be satisfied:

First, the specific name should have a certain level of popularity, be known to the relevant public, and be used to refer to the natural person. Paragraph 2 of Article 6 of the Interpretation by the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition addresses acts of unfair competition by “using the name of another person without permission so that people would mistake its commodity for another's commodity.” Such acts of unfair competition are, in essence, acts of infringement upon others' personal name rights. The mistake for another person's commodity involved in the determination of such acts is closely related to the determination of whether the registration of the disputed trademark may easily mislead the relevant public into believing that there is any endorsement, license, or other specific connection in this case. Therefore, the provision of the aforesaid judicial interpretation may be applied mutatis mutandis in this case to the establishment of conditions for the protection of a natural person's personal name rights.

Second, a stable correspondence must have been established between the specific name and the natural person. In the resolution of conflicts involved in this case between the prior personal name rights and the rights to a registered trademark, the standard of protection for the prior personal name rights should be reasonably determined to balance the interests of the holder of the prior personal name rights and the trademark holder. On the one hand, the registration of the disputed trademark should not be deemed to have infringed upon the personal name rights of a natural person just because the disputed trademark uses or incorporates the natural person's personal name that is known only to a limited number of people or is used only occasionally. On the other hand, too rigorous standards should not be imposed on a natural person asserting protection of his or her personal name rights, as the TRAB did by requiring a “unique” correspondence between the personal name asserted by a natural person and the natural person. When a stable correspondence has been established between the specific name claimed by a natural person and the natural person, even if the correspondence is not “unique,” the personal name rights of the natural person may also be protected according to the law. To conclude, where a natural person claims protection of his or her personal name rights in respect of a specific name by applying the provision of Article 31 of the Trademark Law that “no application for trademark registration may infringe upon the existing prior rights of others,” the specific name must meet the following three conditions: (a) the specific name has a certain level of popularity in China and is known to the relevant public; (b) the specific name is used by the relevant public to refer to the natural person; and (c) a stable correspondence has been established between the specific name and the natural person.

In the determination of whether a foreigner may claim protection of his or her personal name rights in respect of a portion of the Chinese translation of his or her foreign name, it is necessary to consider how a foreigner is customarily addressed by the relevant public in China. If the Chinese translation of name meets the aforesaid three conditions, the foreigner may claim protection of his or her personal name rights according to the law. The existing evidence in this case was sufficient to prove that “乔丹” had a relatively high level of popularity in China and was known to the relevant public, the relevant public in China usually referred to the retrial petitioner as “乔丹” and a stable correspondence had been established between “乔丹” and the retrial petitioner. Therefore, the retrial petitioner may claim his personal name rights in “乔丹.”

III. Whether the retrial petitioner and Nike Company as authorized by the retrial petitioner have proactively used “乔丹” and the impact of any facts of proactive use on the personal name rights claimed by the retrial petitioner in this case

First, in accordance with the provision of paragraph 1 of Article 99 of the General Principles of the Civil Law of the People's Republic of China, “use” is one of rights of the holder of personal name rights, rather than his or her obligation, and by no means is a legal prerequisite for the holder of personal name rights to prohibit others from “interference, theft, and counterfeiting” and claim protection of his or her personal name rights.

Second, in the application of Article 31 of the Trademark Law to protect others' prior personal name rights, whether the relevant public may be easily misled into believing that the goods or services bearing the disputed trademark have any endorsement, license, or other specific connection with the natural person is a key factor in the determination of whether the registration of the disputed trademark has infringed upon the personal name rights of the natural person. Therefore, provided that the aforesaid three conditions for the protection of personal name rights are satisfied, a natural person has the right to acquire protection of his or her personal name rights in respect of a specific name that has not been proactively used by the natural person, in accordance with Article 31 of the Trademark Law.

Finally, it is possible that a foreigner with a certain level of popularity in China or an interested party has never proactively used the personal name of the foreigner in China, or for the convenient reference to his or her personal name, linguistic habits, cultural differences, or other reasons, the “personal name” familiar to and used by the relevant public and news media in China is not exactly the same as the personal name proactively used by the foreigner or the interested party. For example, in this case, the relevant public and new media in China generally referred to the retrial petitioner as “乔丹,” whereas the retrial petitioner and Nike Company mainly used “Michael Jordan.” However, both “Michael Jordan” and “乔丹” had high popularity among the relevant public and were generally used by the relevant public to refer to the retrial petitioner, to which the retrial petitioner had raised no objection. Therefore, the claim of the TRAB and Qiaodan Company that the retrial petitioner and Nike Company did not proactively use “乔丹” and the retrial petitioner did not have personal name rights in “乔丹” should not be supported.

IV. Whether Qiaodan Company registered the disputed trademark with evident subjective malice

In this case, whether Qiaodan Company had evident subjective malice in applying for the registration of the disputed trademark was a key consideration factor in the determination of whether the registration of the disputed trademark had infringed upon the personal name rights of the retrial petitioner. The existing evidence in this case was sufficient to prove that knowing the high popularity of the retrial petitioner and his personal name, “乔丹,” and failing to consult and negotiate with the retrial petitioner for a license or authorization, Qiaodan Company registered a large number of trademarks closely related to the retrial petitioner including the disputed trademark, indifference to the harmful result that the relevant public were misled into believing that the products bearing the disputed trademark had a specific connection with the retrial petitioner, so that Qiaodan Company achieved the “endorsement” by the retrial petitioner and other effects without incurring too much cost. The acts of Qiaodan Company violated the principle of good faith provided for in Article 4 of the General Principles of the Civil Law of the People's Republic of China, and Qiaodan Company had evident subjective malice in the registration of the disputed trademark.

V. The Impact of Qiaodan Company's operations and efforts to promote, use, win awards for, and protect its business name and relevant trademarks

Qiaodan Company's operations and efforts to promote, use, win awards for, and protect its business name and relevant trademarks were insufficient to legitimize the registration of the disputed trademark.

First, from the perspective of the nature of rights and the components of infringement upon the prior personal name rights, a personal name is used to refer to, address, and distinguish a specific natural person, and personal name rights are a natural person's personality rights in his or her personal name, whereas a trademark plays a role mainly in distinguishing the source of goods or services and therefore is in the realm of property rights, substantially different from the personal name rights. In the determination of whether the registration of the disputed trademark infringes upon the prior personal name rights of another person, the key is whether the relevant public may be easily misled into believing that the goods or services bearing the disputed trademark have any endorsement, license, or other specific connection with the holder of the prior personal name rights. Its components are different from those of trademark infringement. Therefore, even if Qiaodan Company and its trademark, “乔丹,” had gained a high level of popularity in specific product categories after Qiaodan Company's years of operations, marketing, and use and the relevant public were able to recognize that the products bearing the trademark, “乔丹,” were from Qiaodan Company, these factors were insufficient to prove that the relevant public would not be easily misled into believing that there was any endorsement, license, or other specific connection between the products bearing “乔丹” and the retrial petitioner.

Second, Qiaodan Company's malicious application for registration of the disputed trademark had infringed upon the prior personal name rights of the retrial petitioner, evidently contrary to the principle of good faith. The market order or commercial success claimed by the TRAB and Qiaodan Company were not completely the legitimate outcome of Qiaodan Company's operations in good faith, but was based on the misleading of the relevant public to some extent. Maintaining such market order or commercial success is not conducive to protecting the lawful rights and interests of the holder of personal name rights, safeguarding the interests of consumers, and purifying the trademark registration and use environment.

(Judges of the effective judgment: Tao Kaiyuan, Wang Chuang, Xia Junli, Wang Yanfang, and Du Weike)