• Prolific trademark filer using website near-identical to Marks & Clerk site
  • Spokesperson for firm confirms it's seeking to block the copycat site
  • New data reveals how major IP firms are failing to attract Chinese applicants

World Trademark Review has learned of a prolific filer of trademark applications at the UK IPO, operating under the name Champion Intellectual Property Management, which has copied the website of leading IP law firm Marks & Clerk. The discovery comes as new data reveals a UK filing spree on the part of previously unobserved Chinese entities – with one expert warning that Western firms are “looking in the wrong place” when seeking to attract the new wave of applications emanating from China.

Since 2012, Champion Intellectual Property Management (CIPM) has filed just over 500 trademark applications around the world. A majority of those are spread across three jurisdictions, Singapore (143), the United Kingdom (126) and Canada (107), with a further 142 in Australia, Benelux, Denmark, the EU, France, Germany, Ireland, Sweden and the United States. What makes the activities of this law firm of note, however, is that its website is nearly identical to that of leading UK intellectual property firm Marks & Clerk (click here for a comparison image).

There are some changes between the two sites. For example, the Our People page includes photos of Marks & Clerk attorneys but with slightly changed names – “CIPM partner William Gilbert” is, in fact, Marks & Clerk partner Mike Gilbert, and “consultant Charlie Alge” is Marks & Clerk partner Charlie Balme. On the flipside, there are some areas of the website that are unchanged from the original – CIPM’s Accessibility page references Marks & Clerk more than once, while the Our Solicitors page does not change the name of Marks & Clerk partner Graham Burnett-Hall (although CIPM has downgraded his job role to assistant).

It is unclear how long the website has mimicked the design of the Marks & Clerk site. According to the Internet Archive, the domain was first active in 2012 and had a simple Chinese-language site promoting its trademark filing capabilities. The website changed to English language in 2014, with a “mobile-first” site. Those seeking information about the firm around that time would have been disappointed, as the history page only contained gibberish text and photos of cats. The website appeared to be inactive from early 2016, and there is no archive information beyond May of that year. Therefore, it is difficult to ascertain when the copycat website launched.

Details on the firm’s ownership are also sketchy. The firm has a registered UK company name (incorporated in 2013 and dissolved this May), with an office claimed to be in Basingstoke, UK – the address listed is the same as a self storage unit, so presumably it is solely used to receive post. The company lists one employee, Zhenzhen Yang, who is on CIPM’s Our People page. Elsewhere, LinkedIn lists three past and two current employees at CIPM. Of those claiming to still work for the firm, one is hidden and the other is the firm’s channel manager, Zoran Xie. He claims to be based in a tower block in the heart of Beijing and, in his personal description, he describes how he began his career as an interior designer before moving on to manage a company (CIPM), adding: “In this company, I am able to play what I learned, and can play the role of my expertise to the extreme.”

We reached out to Champion IP Management for further information but received no response. For its part, a representative for Marks & Clerk confirmed that the firm is seeking to block CIPM’s website. Maureen Kinsler, chairman of Marks & Clerk International, clarified to World Trademark Review that “Champion IP Management is in no way associated with Marks & Clerk”, and that “its website reproduces material protected by copyright and, as far as the UK at least is concerned, is passing itself off as being connected to Marks & Clerk Intellectual Property”. She expanded: “Our solicitors in the UK and China are currently working to identify the entity behind this. We have been in contact with the ISP to request that access to the website is blocked and hope that this will be done shortly but are prepared to obtain a court order if necessary. While it is inconvenient that Champion IPM has chosen to target our brand, we expect this website to be blocked shortly. In the meantime, we would strongly advise people to avoid what is clearly not a reputable entity.”

Sign of the times

While it is easy to dismiss Champion Intellectual Property Management as not reputable, it is worth remembering that the company has filed over 500 trademarks since 2012. It shows no sign of slowing down either, with at least 20 trademarks applications filed in the past two months. In fact, according to data from trademark watching platform CompuMark, it is one of the leading trademark agents/representatives for Chinese applicants in the UK over the past couple of years.

Top agents/correspondents of Chinese trademark applicants in the UK: 2016 – 2017 YTD

In fact, as the table demonstrates, the leading representatives for Chinese applicants in the UK is dominated by small firms and individuals, with few major law firms making an appearance. By comparison, Marks & Clerk – which is the UK’s largest trademark filer, with offices in Beijing and Hong Kong – has filed just five UK trademark applications for Chinese applicants since the beginning of 2016.

The explanation for this is complex, explains Robert Reading, director of custom & managed solutions at CompuMark. “The challenge for UK IP law firms in relation to China is that they are assuming that Chinese applicants will follow the traditional approach; namely that they will contact a large traditional Chinese IP law firm, who will in turn contact large traditional law firms in each country to file trademark applications for their clients,” he says. “The sudden growth in foreign filings coming out of China is not following this model. Chinese applicants looking to file trademark applications outside of China are not contacting traditional Chinese IP law firms. Entirely new routes to access foreign trademark markets are being forged, with traditional firms being completely bypassed.”

With China’s vast population, rapidly expanding middle class and growing economy, it’s been seen as the key growth driver for many major IP law firms, especially when it comes to trademark prosecution. But for most, there has not been significant growth in filings from Chinese applicants. The issue, says Reading, is that firms have not adapted to the situation on the ground: “Knocking on the same doors in Beijing – even opening offices in China and Hong Kong – is looking in the wrong place. The new wave of foreign applications pouring out of China are coming from new areas away from Beijing. Extremely cost conscious, they are filing directly and simply using a local address for service when required, using a local contact or a company set up simply to act as a post box.”

For Reading, the key to tapping into this revenue generation opportunity is for UK firms (and, indeed, their European and US counterparts) to understand and accept that the ‘old’ model does not apply to China: “They need to research where new applications are actually coming from within China, make new connections, and potentially offer entirely new services at a price level and margin that reflects volume rather than quality. They also need to be aware that the rules have changed – the Chinese market has a different attitude towards intellectual property (especially respecting rights) and is sophisticated and naive at the same time.”

The key takeaway is that international firms must re-evaluate their strategies if they intend to significantly expand their trademark prosecution practice through a growth in Chinese applicants. Failure to do so will see China-based entities continue to take a majority of the work. Crucially, as well as the new filings landscape, the marketing activities of other firms seeking to service Chinese clients are important to monitor. While Marks & Clerk has seen its website copied in this instance, other firms may also fall victim to copycat activities – if they haven’t already.