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June, 2017

China's trademark squatters pilfer names of top foreign law firms

In the past two years, China's trademark squatters have appropriated the names of at least three well-known global law firms: Squire Patton Boggs, Norton Rose Fulbright and Osborne Clarke.

Earlier this year, using the URL squirepattonboggs.net, an entity claiming to be a "China's preeminent, full-service, intellectual property agency" began promoting itself online. The logo the trademark squatter is using looks very similar to that of the real Squire Patton Boggs; the website also features that US law firm's name. The "firm" claims to have a team of over 600 lawyers and staff in 22 offices across mainland China and Hong Kong.

In fact, the firm purporting to be Squire Patton Boggs in China is a legally established trademark agency, not a licensed law firm. The company address matches the filings of Suzhou-based Guanghua Intellectual Property Co. Ltd.

Acting as an intermediary for prospective trademark owners, Guanghua aims to register foreign marks with potential in China.

Guanghua has also assisted a Chinese entity unaffiliated with Osborne Clarke to register the British law firm's name.

Analysis:

Experts say that sometimes it is preferable to abstain from action when a Chinese trademark squatter appropriates a mark, in particular, if the mark is not registered to a competitor. In this best-case scenario, after three years a mark can be canceled on non-use grounds.

However, a representative from Squire Patton Boggs told The Asian Lawyer that the company is taking action to safeguard its name in China. Squire Patton Boggs has filed an invalidation proceeding to cancel Guanghua's use of the mark.

Squire Patton Boggs will likely face a protracted legal battle, as it is squaring off against a seasoned trademark squatter: Qinhuangdao Hongshun Technology Development Co. Ltd., who has previously appropriated the names of Osborne Clarke and Norton Rose Fulbright for use in domains.

While both Osborne Clarke and Norton Rose Fulbright recovered their domain names, Hongshun still owns the trademarks of both firms as well as Squire Patton Boggs under the legal services category.

For brand owners, vigilance is essential, as China's trademark regime follows the "first to file" rule. For as long as that system remains in place, any company entering the China market must register its name immediately. Otherwise, if a squatter appropriates a company name, the burden is on the brand owner to prove to the court that it is the rightful owner of the trademark.

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