Cybersquatters have taken advantage of BigLaw mergers to beat those firms to the trademark registry in China
The experience of the other firms targeted by Qinhuangdao Hongshun, both of which managed to win UDRP cases against the Chinese company, bear this out.
In the case of Norton Rose Fulbright, Qinhuangdao Hongshun used the same basic playbook it subsequently employed to go after Squire Patton Boggs. The Chinese company registered for the Chinese trademark on the name “Norton Rose Fulbright” in November 2012, mere days after Norton Rose and Fulbright & Jaworski announced their intention to merge to become Norton Rose Fulbright.
The merger was completed in 2013, and the firm did not file its own trademark registrations in China until 2014.
Then, in May 2014, Qinhuangdao Hongshun set up a website at norton-rose-fulbright.com, a URL identical to the real firm’s website except for the dashes, and began using the firm’s name on the website to advertise Chinese intellectual property services.
Norton Rose won a series of UDRP cases in Hong Kong in 2014 and 2016, convincing arbitration panels it was the one with the legitimate rights to its own firm name despite the Chinese entity’s earlier Chinese trademark filings.
When it came to Osborne Clarke, Qinhuangdao Hongshun took a different approach, using a more basic cybersquatting route. It registered a domain name for a slightly incorrect version of the firm’s name seemingly out of the blue in December 2015. While the UK law firm’s real website is located at osborneclarke.com, Qinhuangdao Hongshun sought to set up shop at osbornclarke.com, leaving off the letter “e” in “Osborne.”
Then in March 2016, the Chinese company filed for the Osborne Clarke trademark several months before the British firm—which did not have a presence in mainland China until 2017—sought to get the name protected in China.
Osborne Clarke managed to wrest control of the site in March 2016 after convincing a World Intellectual Property Organization arbitrator
that Qinhuangdao Hongshun had maliciously
registered a site with a name very close to its European Union trademark—in part by pointing out that the Chinese firm also had registered websites using the names of other law firms, including Norton Rose.
According to the panel decision, Qinhuangdao Hongshun had not set up an active site on the disputed domain before Osborne Clarke lodged its complaint seeking to reclaim it.
Representatives from Norton Rose and Osborne Clarke declined to make attorneys available to comment on the firms’ experiences with the Chinese squatter. However, the Chinese government’s trademark database listings for the firms’ trademarks currently have registrants that match Norton Rose’s and Osborne Clarke’s London locations.
Lessons for Law Firms
The most important question for law firms looking for a lesson from the experiences of the firms that have faced these problems in China, however, is how to avoid the problem in the first place. The answer is simple. Experts on Chinese intellectual property agree that for law firms, as for any other business, the best bulwark against trademark squatters in China is to file the trademark first.
“The best tactic is to register early,” says David Shen, a Shanghai-based partner at Allen & Overy who heads the firm’s IP practice in China.
“Registering the mark doesn’t cost that much, and getting the trademark if you do not file first is sometimes not even possible and can get really expensive,” Shen says. “Getting your name into the trademark office early is the best defense.”
Large international law firms announcing mergers have to make combating these squatters part of their strategy, something that can be less of a priority for small- to midsize firms, according to Dresden of Harris Bricken.
“Law firms need to realize that they are definitely big enough [to pique squatters’ interest]. They need to read the stories and know that it happens because if it happens why wouldn’t it happen to you? Especially because there are plenty of mergers and acquisitions among law firms,” Dresden says.
“Because the law firm name is a brand, law firms need to protect it, just the same way that Nike and Starbucks and all the other big consumer brands protect theirs,” he adds.
Shen adds that once firms have a concrete idea of which name they plan to use, they should file immediately. “Pre-merger, this could be tricky because there could be a question among the two firms of who owns this new name, but maybe they could reach a tentative agreement between them in order to do this early,” Shen says. “It’s not current standard practice, I have to say, but then this is a new problem. And you have to deal with this creatively, and this could be one way to do that.”
While making sure to be the first one to file a trademark registration in China is ultimately a simple and winning strategy to combat trademark squatters, pre-emptively taking on cybersquatting can be trickier.
Any law firm is likely to take the time to secure all the important top-level domains for its firm name. But
there are endless permutations that a cybersquatter can snag, as shown by the different variations that Qinhuangdao Hongshun came up with for domains similar to those of the three international firms it targeted.
It is neither practical nor prudent for a law firm to try to buy up every possible domain, so instead firms must make choices about which domains they most wish to possess and what steps, if any, to take should a squatter reach out demanding cash for a similar domain.
“At that point, it becomes a balance test of whether you think that the domain name taken by a third party in bad faith is worth taking it back, as well as whether you really want to keep 200 domains when you really only use one official version,” says Song of Hogan Lovells.
For a law firm looking to take on a squatter, it is important to be creative in attacking from as many avenues as possible, experts say, as the firms targeted by Qinhuangdao Hongshun did by going after the domain names and the trademarks. Lawyers who regularly advise clients on these kinds of trademark issues say it is also important to look for moments when a favorable settlement might be possible to put the matter to rest more quickly.
“You look at every one of these cases holistically. You look at every single aspect of what the pirate is doing,” says Plane of IP consultancy SIPS.
Abigail Rubenstein is a journalist with more than a decade of experience covering legal issues, law firms and lawyers. Her work has been featured in national and international publications in the United States and Asia. This article was published in the November 2018 ABA Journal magazine with the title "What's in a Name?"