Is it the shoes?
Is it the shoes?

As we noted last week, Michael Jordan has lost – again – in his ongoing effort to combat alleged trademark infringement in China.

Our first post on this topic reiterated a point that must be familiar to even the most casual reader of this blog: register your trademark now, before someone else does it for you.

But the Jordan decision also contains a more subtle lesson: protect your Chinese brand, even if you don’t even have one yet. Because the minute your English-language brand gets attention in China, it will be given a Chinese name by the local media and consumers. Without exception. And the minute that happens, someone will register the Chinese name as a trademark, and you’ll have lost all control of your brand in China.

A primary focus of the Jordan litigation was over Michael Jordan’s Chinese name (乔丹, or “Qiaodan” in pinyin), the Chinese transliteration of “Jordan.” This is the name by which Michael Jordan is known in China, but he had not picked this name himself, and it only refers to his last name. And as the recent Chinese court decision noted, the乔丹/Qiaodan transliteration is shared by everyone in the world with the surname Jordan. (It’s true that Michael Jordan retains extremely high name recognition in China, but it bears mentioning that another NBA player named Jordan was dominating the sports headlines in July.)

How do you control a name that you don’t come up with yourself? In China, it’s not even a rhetorical question: you can’t, unless you’re also the first to file a trademark application. And so someone else registered the Chinese version of Michael Jordan’s name as their company name and a trademark, and Jordan has been playing catch-up ever since. And losing.

This is also exactly what happened to Pfizer, which released the drug Viagra in America before they had chosen a Chinese name for it, only to find that a Chinese name had been selected for it, popularized, and registered by a third party. Pfizer’s subsequent attempt to re-brand Viagra from the name it was already called in China (伟哥, or “Weige”) to its preferred choice (万艾可, or “Wan’aike”) was doomed from the start, as evidenced by a series of expensive court cases that Pfizer kept losing. For a more scholarly analysis of the Viagra trademark battle, read Professor Daniel Chow’s article Lessons from Pfizer’s Disputes Over its Viagra Trademark in China.

And – stop me if you’ve heard this before – the same thing happened (and keeps happening) with French winemaking giant Castel Frères, which saw someone else register the popularized Chinese version of its name (卡斯特, or “Kasite”) and has been losing court battles ever since in an attempt to regain “its” trademark. And again with Australian winemaker Penfolds and the Chinese version of its name (奔福, or “Benfu”).

So don’t be like Mike. If you care about your brand in China, it’s not enough just to register your English-language brand. You also need to select a Chinese name and register that as a trademark in China. Otherwise, you’ll forfeit not only the right to use your Chinese brand name, but the ability to choose it in the first place.

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Photo of Matthew Dresden Matthew Dresden

Matthew advises a wide range of businesses on corporate and transactional matters at Harris Bricken, with an emphasis on media and entertainment, international intellectual property, and cross-border work. Matthew provides finance, development, production, and distribution legal services for filmmakers and other creative artists…

Matthew advises a wide range of businesses on corporate and transactional matters at Harris Bricken, with an emphasis on media and entertainment, international intellectual property, and cross-border work. Matthew provides finance, development, production, and distribution legal services for filmmakers and other creative artists, and has worked on behalf of film studios, cable channels, production companies, video game developers, magazines, restaurants, wineries, international design firms, product manufacturers, outsourcing companies, and computer hardware and software companies. Matthew is widely viewed as an expert in Chinese intellectual property law, and is regularly quoted in publications from the New York Times to The Economist to Variety.

Before attending law school, Matthew worked in Hollywood for eight years as an independent filmmaker, starting as a production executive for Roger Corman’s Concorde-New Horizons Pictures. Before that, he was a computer science graduate student at Stanford University. He has also worked as a journalist, a transportation planner, a food critic, and a website designer. He serves on the board of the Northwest Film Forum, and is currently the immediate past chair of the Washington State Bar Association’s International Practice Section. He is also an adjunct faculty member at Indiana University Maurer School of Law, where he teaches a clinic on legal issues for independent filmmakers.

Matthew was born and raised in the San Francisco Bay Area. He spends his free time watching movies, hiking, cooking spicy food, and relaxing with his wife and daughter.