A tale of two Squire Patton Boggs: global firm faces battle over its own name in China 27 Apr 17
A year after we reported on a legal battle between Norton Rose Fulbright and a small Chinese firm using the name for IP legal services, World Trademark Review has discovered that the same entity now appears to be offering trademark and brand protection legal services under the Squire Patton Boggs name. However, with the Chinese firm being granted a trademark registration for the name earlier this month, the international law and lobbying firm may face an uphill battle if it wants exclusive rights to its name in China.
The Chinese firm’s website, located at squirepattonboggs.net (click here for screenshots), uses a logo almost identical to that of the established international firm and has text on its homepage claiming that it is “one of the largest IP agencies in China”. The site includes information on the wide-range of IP services it offers, including trademark and patent due-diligence, filing, protection, mediation and litigation. According to WHOIS data, the website is owned by the same registrant behind the Norton Rose Fulbright namesake we reported on in January last year.We wrote at the time that the registrant had acquired a number of other domains linked to prominent international law firms, including Squire Patton Boggs. These were inactive at the time of publication. However, while the Norton Rose Fulbright website has now been taken down (click here for screenshots from when it was live), the Squire Patton Boggs website has been active for at least a month.
Posing as a potential client, World Trademark Review was contacted by a representative from the Chinese firm – identified as “Zhijun Fang, trademark attorney, Squire Patton Boggs IP Practice Group” – who confirmed that he could “assist in filing trademark applications and dealing with other trademark matters in China”. He attached an expansive pricing list, which uses Squire Patton Boggs branding. When asked if the firm has an office in Singapore (as the international firm does), Fang admitted “our firm is only based in China and we regret not be able to discuss this matter in Singapore”, suggesting – at least by email – the firm is not claiming to be linked to the international firm. However, each email of Fang’s did state “the brand of Squire Patton Boggs is one of our most valuable assets”.
The correspondence received from the China-based Squire Patton Boggs was well-written and professional, and the website itself is significantly more advanced than last year’s Norton Rose Fulbright effort. But a closer look at the site reveals a number of curious elements. For example, the About Us text appears to be taken from a WTR 1000 description of Chinese law firm Unitalen (with ‘Unitalen’ replaced with ‘Squire Patton Boggs’, except in once presumably accidental instance). The What We Offer page also features text that is identical to that on the Unitalen website, while the attorney photos used on the Our Specialists page are seemingly stock images (eg, the photo used for the aforementioned Zhijun Fang is taken from Getty Images).
We also noticed that the firm description on the homepage is near-identical to that on the website of Chinese boutique IP firm Guanghua IP (although, curiously, the images used on Guanghua IP’s website are also taken from other sources – for example, the photo used for partner Mei Tong is taken from a movie poster featuring Chinese actress Liu Yifei).
Following client and market feedback, the well-established international Squire Patton Boggs – which recently bolstered its ranks with the hiring of former US House Speaker John Boehner – is a recommended firm in the latest edition of the WTR 1000, and is clearly adept at handling its clients’ brand protection issues. A spokesperson for the firm – which already has two offices in China – acknowledged the other firm’s presence, telling us: “While we are aware of this company, we have no affiliation to them. We will take all necessary measures to protect our brand in China from nefarious activities.”
What measures the firm can take in this instance remains to be seen. A month before Squire Patton Boggs was officially formed (following a merger between the firms Squire Sanders and Patton Boggs), the entity behind the Chinese company filed a trademark application for the term SQUIRE PATTON BOGGS in China. Information on the application confirms that an opposition was lodged (although we could not confirm which party filed it), but nonetheless the mark was registered earlier this month. For its part, the newly-merged Squire Patton Boggs filed for a Chinese trademark itself in December 2014 (six months after the Chinese entity), but that mark has not yet reached registration.
For now though, there are two law firms offering to undertake legal work in China under the name Squire Patton Boggs. As well as ‘litigation services’ and ‘intellectual property consultancy’, the Chinese entity’s registered trademark also covers ‘funerals’ – so whether it plans to launch a branded funeral service (as was the case last year with the Chinese Norton Rose Fulbright) remains to be seen…
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