Blow for Squire Patton Boggs in battle over its name in China; firm voices confidence it will eventually “prevail” 13 Sep 17
- Squire Patton Boggs in fight with Chinese entity over use of name
- Recent domain dispute dismissed as Chinese company has a registered mark
- Dispute demonstrates challenge some law firms face in protecting their name
Five months after we reported on the ongoing legal battle for its name in China, international law and lobbying firm Squire Patton Boggs hit another hurdle after it lost a crucial domain dispute decision. While a representative told us the firm is adamant it will “prevail” in the end, a source at the Chinese company operating under the Squire Patton Boggs name was critical of the international firm, seeking to use the dispute to make a pitch to its clients.
As we reported in April, a Chinese company appears to be practicing law using the same name and logo to that of the established firm Squire Patton Boggs, promoting its practice on a website located at squirepattonboggs.net (click here for screenshots). In our investigation, we posed as a potential client and were sent an expansive pricing list detailing a range of IP services they could undertake (including trademark filing, protection and litigation). Delving deeper, we discovered the Chinese company is the same one that had previously used the brand of another international law firm, Norton Rose Fulbright (we reported on this a year prior). Much of the text used on the Chinese company’s website was lifted from other law firm sites, and many of the images were either stock images or taken from movie posters, including those on the staff page. Crucially, we discovered the Chinese entity filed a trademark application in China for the term SQUIRE PATTON BOGGS a month before Squire Patton Boggs officially formed following a merger.
While the website remains active and the company appears to still be practicing IP services in China, the international Squire Patton Boggs has continued to pursue legal means to claim ownership of its name in the world’s most populous country (where it has two offices). The first action was opposing the Chinese company’s trademark, but it appears that was not successful as the mark entered the Chinese trademark register in April this year. The next move was filing an Asian Domain Name Dispute Resolution Centre (ADNDRC) complaint against the ‘squirepattonboggs.net’ domain. This move was, again, unsuccessful.
In its decision handed down on August 31, the single-person ADNDRC panel concluded that the current trademark holder in China maintained rights in the domain and dismissed the complaint. Of particular note in the decision is the revelation that Squire Patton Boggs has offered to pay the Chinese company $54,000 to purchase all of the IP related to the dispute. The panel member further suggested that the two sides find an alternative solution. “The evidence submitted by both parties shows a more complex dispute between the parties,” the panel stated. “You can choose litigation, arbitration, mediation and other means to resolve the dispute.”
For the international Squire Patton Boggs, at first glance the decision is another blow in this increasingly bitter dispute. However, a spokesperson for the firm told World Trademark Review that they are not necessarily seeing the decision as a ‘defeat’: “The ADNDRC decision simply pushes the resolution of the domain dispute to a later time when the currently pending trademark invalidation proceedings will be concluded – proceedings in which we fully expect to prevail.”
But the Chinese company was equally defiant in its response to the decision. A representative, Zhijun Fang (who is listed as a partner on the company’s website – although the photo claiming to be Fang is actually from Getty Images), told World Trademark Review that the trademark and domain name are “legitimate rights and interests” that he will continue to fight for. “All statements, complaints and interpretations are Squire Patton Boggs LLP’s unilateral proposition, which not only lack legal basis but also disaccord with the facts,” he claims. “We provide professional and efficient legal services in China to worldwide clients under the brand ‘Squire Patton Boggs’. We have rich practice experiences and successful cases, especially in trademark and domain name disputes. In fact, we welcome global clients, as well as potential and existing clients of Squire Patton Boggs LLP, to contact us to solve any trademark or domain name dispute in China.”
Along with cheekily making a play for the international firm’s clients, Fang also shifted to an aggressive tone when speaking of the ongoing legal battle. “Squire Patton Boggs LLP declares that it has ‘global largest scale, the most comprehensive fields’, however it has suffered a succession of failures in competing for its so-called legitimate rights and interests,” he says. “It is hard to convince clients that Squire Patton Boggs LLP’s level of expertise and professional ability is the same as its propaganda – if Squire Patton Boggs LLP cannot protect its own so-called legitimate rights and interests, why should clients believe it can protect theirs?”
The mocking rhetoric of the Chinese entity suggests a degree of confidence that it will continue practicing under the name. Meanwhile, the established international firm – which is not rising to the rhetoric – appears to be equally confident that it will prevail in the end. While some will smile wryly at the dispute, Squire Patton Boggs LLP is not the first firm to be embroiled in such a dispute – and it may not be the last.
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