Firms To Watch: Intellectual property

The nimble team at Esguerra & Blanco advises on all aspects of brand protection, in addition to licensing and technology transfer agreements. Abelaine Alcantara is a key contact in the practice.
Jointly led by Elmer Serrano and Tephanie Gandia, the team at Serrano Law advises on trademark and patent registrations, in addition to inter partes proceedings before the Intellectual Property Office of the Philippines.

Intellectual property in Philippines

Baranda & Associates

Baranda & Associates’ first-rate team has demonstrable experience advising on contentious trademark and copyright matters, and frequently works with enforcement agencies. The practice regularly conducts raid actions against targets engaged in the sale and distribution of counterfeits, in addition to filing and handling cases before the courts, including appeals to the Court of Appeals and the Supreme Court. Patent matters also form a large portion of the team’s workload. Edmund Jason Baranda and Claire Corral jointly lead the group, and Ellen Rico-Claro advises on a broad range of enforcement mandates.

Practice head(s):

Edmund Jason Baranda; Claire Corral

Other key lawyers:

Ellen Rico-Claro

Key clients

PRADA Luxembourg

Specialized Bicycle Components

Iraya Energies

Spotify

UK Foreign, Commonwealth and Development Office

MJN U.S. Holdings LLC

Fellowes

Total SA

Work highlights

  • Represented Prada S.A. in enforcement action against targets in a popular mall, Greenhills Shopping Center (GSC).
  • Managing and implementing four work packages in the Philippines under the Financial Sector and Intellectual Property (FSIP) programme, a component of the United Kingdom’s ASEAN Economic Reform Programme.
  • Provided advice to Spotify on various issues involving copyright, especially in relation to their license agreements with CMOs and pending legislation seeking amendment of IP Code including provisions on Extended Collective Licensing.

Cruz Marcelo & Tenefrancia

The ‘collaborative and knowledgeable’ team at Cruz Marcelo & Tenefrancia is led by ‘exceptional’ Susan Villanueva, who specialises in patent litigation and enforcement cases. The practice covers the full spectrum of IP matters, from the protection of business models, trade secrets and undisclosed information to the registration of trademarks and patents. It is also recommended for its work relating to the safe deposit of copyrighted work. The team also excels in advising on the registration of technology transfer agreements, in addition to handling administrative, civil and criminal cases concerning food and drug safety laws. Patricia Bunye is noted for her expertise in licensing and franchising matters, while Divina Gracia Pedron focuses on brand protection, trademark and copyright enforcement cases. Head of the patent team, Rowanie Nakan, is another key figure.

Practice head(s):

Susan Villanueva

Other key lawyers:

Patricia Bunye; Rowanie Nakan; Divina Gracia Pedron

Testimonials

‘Cruz Marcelo & Tenefrancia’s IP team is very collaborative and knowledgeable when it comes to the process of IP cases in the Philippines.’

‘Rowanie Nakan is somebody who will provide you with details, possible outcomes, and steps on what to do during worst case scenarios.’

‘Susan Villanueva has enlightened us and truly gave us good legal counsel. Her team is quick to aid and is always proactive in its approach.’

‘Susan Villanueva is one of the most brilliant individuals I know and she does not use her brilliance to intimidate or alienate, instead, she uses it to enlighten and give good counsel.’

‘Works quickly and efficiently, great overall knowledge base.’

‘Cruz Marcelo always reports deadlines ahead of time.’

‘Susan Villanueva manages the prosecution of our trademark portfolio. She has been exceptional, high attention to detail and proactive in reporting of issues.’

Key clients

JT International SA

In-N-Out, Burgers, Inc.

PT. Inertia Utama (Dexa Group)

Department of Science and Technology – Technology Application and Promotion Institute

San Miguel Food and Beverage, Inc.

United Laboratories, Inc.

Ayala Group Legal

Max’s Group, Inc.

Vice Cosmetics Group Inc.

University of the Philippines

Oriente Express Techsystem Corporation (“Cashalo”)

Chroma Hospitality Inc./Filinvest Hospitality Corporation

Makati Development Corporation

Marine Resources Development Corporation

Metromart Technologies, Inc.

Zalora SEA

Work highlights

  • Represented Oceanic Empire Limited in obtaining favourable decisions involving oppositions to its applications for the “WGLOBALCENTER” and “WHIGHSTREET” marks.
  • Represented In-N-Out Burgers in successfully opposing a trademark application filed by an international chain of restaurants/ café which appropriated its trade name and mark.
  • Handled the patent portfolio of the Philippines’ national state university – The University of the Philippines.

Ortega Bacorro Odulio Calma & Carbonell

Roane Lopez heads the patents team at Ortega Bacorro Odulio Calma & Carbonell, and Virna Emeline Caringal-Divino leads the trademarks practice. The firm provides the full range of services in IP protection and counts franchising and licensing matters in its workload. Counting international companies and institutions across the pharmaceutical, sport and entertainment sectors among its key roster of clients, the team is also recommended for its work on cases involving copyright litigation in the publishing and music industries.

Practice head(s):

Roane Lopez; Virna Emeline Caringal-Divino

Key clients

Bayer

Takeda

Lincoln Electric

The Harris Group

Samsung

NBA Properties, Inc.

President and Fellows of Harvard College

Isuzu Motors Philippines, Inc.

Shell International BV

The Dow Chemical Company

Del Monte Philippines, Inc.

Work highlights

  • Litigating multiple patent infringement cases against local pharmaceutical companies that launched generic versions of the client’s patented medicines.
  • Maintaining the registrations in the Philippines of all the NBA and WNBA team names.
  • Registering and maintaining the trademark portfolio of Harvard, as well as implementing an anti-counterfeiting program of action against unauthorised use of the names and trademarks used by Harvard.

Quisumbing Torres

Quisumbing Torres’ ‘robust and agile’ team is led by Bienvenido Marquez and advises on all aspects of the protection of novel technology, through to litigating IP disputes. Counting leading global brands among its key list of clients, the group has a strong track record in areas as diverse as brand management and enforcement, as well as patent prosecution. Praised as ‘meticulous and resourceful’, Divina Pastora Ilas-Panganiban’s practice focuses on trademark, copyright and patent protection matters, while Reena Mitra-Ventanilla advises on the IP-related aspects of technology transactions, in addition to copyright issues and data privacy work. Senior associate Neonette Pascual focuses on a range of mandates, from data privacy and general IP advisory work to trademark and patent enforcement cases.

Practice head(s):

Bienvenido Marquez

Other key lawyers:

Divina Pastora Ilas-Panganiban; Reena Mitra-Ventanilla; Neonette Pascual

Testimonials

‘The intellectual property team of QT is robust and agile. They respond quickly, are collaborative and easy to work with.’

‘Divina Ilas-Panganiban leads her team with expertise and competency. Meticulous and resourceful, she is easy to work with, congenial and reverent.’

‘It is so easy to reach out to any of the team members of this firm. Apart from the legal advice provided, they are also pragmatic in their approach indicative of the fact that they truly understand the business of their clients.’

Key clients

GlaxoSmithKline

Shell

Universal Entertainment Corporation

L’Oréal

Mang Inasal Philippines, Inc.

Work highlights

  • Obtained for Mang Inasal another favourable ruling from the Court of Appeals, involving other third  party marks, which attempt to use the style, font, and colours of the client’s mark.
  • Represented and assisted a global FMCG company in successfully investigating and carrying out, with the assistance of local authorities, simultaneous enforcement actions against respondents found selling counterfeit items with the marks of the client.
  • Assisted an American pharmaceutical company in filing a patent infringement case against a local pharma company for continuously using, offering for sale, selling and importing the client’s patented pharmaceutical compound, pemetrexed.

SyCip Salazar Hernandez & Gatmaitan

Led by Vida Panganiban-Alindogan, the nimble team at SyCip Salazar Hernandez & Gatmaitan handles a myriad of mandates, from trademark, copyright and patent protection issues to IP portfolio management. It is also adept at advising on the enforcement and licensing of IP rights, in addition to matters concerning the transfer of technology. Other key areas of expertise include IP litigation and enforcement cases, as well as administrative proceedings before the Intellectual Property Office of the Philippines. Anthony Dee advises on the enforcement of IP rights.

Practice head(s):

Vida Panganiban-Alindogan

Other key lawyers:

Anthony Dee

Key clients

F. Hoffmann-La Roche AG

Colgate-Palmolive Company

Dyson Technology

Gap Inc.

AbbVie Inc.

Rolex S.A.

Total S.A.

Pfizer Inc.

Tupperware Brands Corporation

Bostik Philippines, Inc.

Acer Incorporated

Villaraza & Angangco (V&A Law)

Villaraza & Angangco (V&A Law) handles the full gamut of IP mandates under the leadership of Bienvenido Somera. The IP litigation practice covers regular court and administrative litigation for both inter partes and IP rights violation cases, with demonstrable experience in trademark and patent prosecution matters. Other core areas of expertise for the practice include advising on the online protection of IP rights. Katrina Doble focuses on trademark prosecutions and IP commercialisation, while Antonio Miguel Lu, who was promoted to partner in January 2022, has experience in trademark and patent litigation.

Practice head(s):

Bienvenido Somera

Other key lawyers:

Katrina Doble; Antonio Miguel Lu

Key clients

ABS-CBN Corporation

BDO Unibank, Inc.

Getz Pharma (Phils), Inc. and Getz Pharma (Pvt.) Ltd.

Petron Corporation

BigHit Music Co., Ltd. and HYBE Co., Ltd. (previously, BigHit Entertainment Co., Ltd.)

FMTM Distribution Ltd.

F&CO Co., Ltd.

Samsung Electronics Co., Ltd.

HBO Asia

Healol Pharmaceuticals Sdn Bhd.

BeLift Lab Inc.

GD Holdings USA, Inc.

International Fashion Group Pty Ltd.

Weverse Company Inc.

Descorp Inc.

Work highlights

  • Investigated, filed and prosecuted on behalf of Petron Corporation an administrative IP rights violation case before the BLA-IPOPHL, in relation to the commercial use of LPG cylinders that are confusingly similar to Petron’s popular “GASUL” LGP products.
  • Advising Getz Pharma (Phils.) Inc. on the legal viability of introducing several of its generic pharmaceutical products in the Philippines and simultaneously prosecuted multiple patent cancellation cases against impeding patents.
  • Handling the local trademark portfolios of key Korean brands, such as Samsung, Kia, Hyundai, Paris Croissant, F&F and F&CO, CJ Cheiljedang, Gentle Monster and HYBE/BigHit Music.

Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALaw)

With demonstrable experience acting for national and international clients on the contentious and non-contentious aspects of IP protection matters, Victor De Leon and Richmond Lee are at the helm of Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALaw)’s IP practice. The first-rate team is well-equipped to advise on a broad range of mandates, from licensing and franchising to IPR enforcement, civil remedies and opposition proceedings. Alex Ferdinand S. Fider acts for clients across the pharmaceutical, broadcasting, sportswear and cosmetic sectors on the protection and enforcement of IP rights in the Philippines.

Practice head(s):

Victor De Leon; Richmond Lee

Other key lawyers:

Alex Ferdinand S. Fider

Testimonials

‘They are quick and efficient.’

‘Victor De Leon will suggest solutions to problems and alternatives, keeps me informed and up to date. He is reliable and manages our trademark portfolio very well.’

Key clients

Estee Lauder

Energizer

San Miguel Group

Jardine Matheson Group

BP plc

Fraser & Neave

Monde Nissin Corporation

Hershey’s

Honda Motor

Bayer AG

iNova Pharmaceuticals

Philippine Daily Inquirer

Maxim’s Caterers

JHO Intellectual Property Holdings, LLC

Work highlights

  • Acted for China Unionpay in opposing the registration of the mark “UNIPAY” filed by a local individual covering financial and monetary services similar to services offered by China Unionpay.
  • Acted for the owners of the “OFFICEMAX” trademark in a successful opposition action against registration of the identical trademark “OFFICEMAX” for use on paper and related products.
  • Defended Liwayway Marketing Corporation in a trademark opposition case filed by IFP Manufacturing Corp., the registered owner of the “OK NEW! PISDA” mark, against Liwayway’s application for the registration of the “OISHI FISHDA FISH KROPEK” trademark.

Federis & Associates

Counting leading global brands among its key roster of clients, Federis & Associates has a strong focus on trademark prosecution and enforcement. The team has experience in conducting raids against counterfeit products, and regularly assists clients in pursuing actions against online trademark pirates. Mila Federis, who advises on trademark disputes, jointly leads the practice alongside Montini Felicilda, who handles criminal complaints and issues concerning raids on counterfeit products.

Practice head(s):

Mila Federis; Montini Felicilda

Key clients

Philip Morris International

Marriott International Corporation

Yahoo! Inc. (Oath, Inc.)

Signify Holding B.V.

Sharp Corp.

Bridgestone Corporation

Fast Retailing Company Ltd

Chanel, Inc.

Beiersdorf AG

Universal City Studios LLC

Expedia Group

Broadcom Corp (Avago Technologies)

Seiko Epson Corporation

Tencent

Astra Zeneca

Otsuka Pharmaceutical

Expedia

Duracell

Shimano Corporation

Work highlights

  • Advised Philip Morris International in the licensing of its intellectual properties relating to its reduced risk products and brands.
  • Advised Andersen Corporation in the review of its contract relating to the technology development project for the development of a digital sales and marketing tool.
  • Assisted the Chief IP & Associate General Counsel for The Duracell Company in connection with its trademark dispute with the competitor Eveready Philippines.

Gulapa & Lim (Gulapa Law)

Led by Oliver Baclay, the IP team at Gulapa & Lim (Gulapa Law) has notable expertise in the pharmaceutical sector and regularly assists foreign clients on trademark registrations, both locally and internationally. The practice is also skilled in handling patent portfolios for foreign clients, in addition to trademark infringement and unfair competition cases. Baclay advises on disputes concerning patent, copyright and trademark infringements, and associate Maria Isabelle Poblete is another key figure in the team.

Practice head(s):

Oliver Baclay

Other key lawyers:

Aris Gulapa; Maria Isabelle Poblete

Testimonials

‘Gulapa Law is a reliable, excellent and houses a notable team of young and smart lawyers. Gulapa Law is ideal for those seeking cutting-edge work with innovative clients.’

‘The firm boasts a respectful culture where clients feel supported by partners and have the legal resources/expertise to soar with high-level matters.’

‘Gulapa Law is innovative, constantly improving their services for clients. As a client, we very much appreciate their business ethics and working style.’

‘The outstanding lawyer and founding partner Aris Gulapa together with Oliver Baclay, represent clients in different industries including pharmaceutical, telecommunications and automotive sectors. They have extensive experience in trademark and patent prosecutions, anti-counterfeit strategies and copyright and patent litigations around the world.’

‘Oliver Baclay heads up the trademarks department and handles trademark and patent applications and also leads the IP litigation group. Gulapa Law practice is unique because every team member is not only highly competent but very client-oriented and service-minded.’

Key clients

APO-UGEC Security Printing Joint Venture (APO Production Unit, Inc. and United Graphic Expression Corporation)

United Graphic Expression Corporation

Frontiir PTE LTD

Fashion Box S.P.A.

Intake TM Pte Ltd

Asian Development Bank

Island Air Products Corporation

Work highlights

  • Assisted Frontiir PTE LTD., a Singaporean entity, in the national phase entry applications of multiple inventions under the Patent Cooperation Treaty in 11 jurisdictions in Asia.
  • Assisted in the review of all IP agreements including agreement on the comics characters, story line, other copyright protected contents and trademarks of its Philippine-based client in its investment in a Delaware Limited Liability Company engaged in the production of comics.
  • Assisted an Italian entity in the protection and enforcement of its intellectual property rights over its well-known trademarks in the fashion industry.

Hechanova Bugay Vilchez & Andaya-Racadio

Hechanova Bugay Vilchez & Andaya-Racadio houses of team of ‘second to none’ lawyers, licensed patent and trademark agents, as well as other professionals, who handle a broad range of patent and trademark prosecutions, in addition to issues concerning copyright and domain name protection. The practice also has considerable expertise in contentious IP matters, such as enforcement and border control issues. Editha Hechanova leads on numerous anti-counterfeiting initiatives for the firm’s roster of domestic and foreign clients and advises on the IP-related aspects of joint ventures and demergers, as well as licensing and franchising mandates. Brenda Rivera and Noemi Rivera are also key figures in the group.

Practice head(s):

Editha Hechanova; Brenda Rivera; Noemi Rivera

Testimonials

‘The Hechanova Group is capable of handling all intellectual property services, as well as related areas of corporate work. The reliable and practical advice and services that Editha Hechanova and her group provides is second to none.’

‘They are prompt and reliable.’

‘I have known Editha for years and she is very professional and friendly. It is easy to work with her and her team.’

Key clients

Alpargatas SA

Bausch & Lomb, Inc.

Mattel Inc.

2GO Group, Inc.

Reed Smith LLP

Ceed Marketing Corp

One Pharma Marketing Corp.

Newell Brands

Hanol Intellectual Property & Law

Ladas & Parry LLP

Gilead Sciences Inc.

Pintas IP Group

Josefina Manufacturing Corp.

The Sunrider Corporation

Mercedes-Benz Intellectual Property GmbH & Co.KG

Henry Goh & Co SDN BHD

Lyceum of the Philippines University

Zuneca Pharmaceutical Inc.

Sunrise & Co., Pte Ltd.

DOST-TAPI (Dept. of Science & Technology – Technology Application and Promotion Institute)

Quanta Paper Corporation

Grandleap Trading

Work highlights

  • Advising on an action for design infringement filed by Panasonic against Yatai on its industrial design for “A Seesaw Switch”.

Martinez Vergara & Gonzalez Sociedad

Led by Kristine Bongcaron, who was promoted to partner in November 2021, the team at Martinez Vergara & Gonzalez Sociedad assists its roster of clients on the protection, administration and maintenance of their IP rights. The practice routinely advises on trademark and patent searches, in addition to trademark infringement litigation. Other key areas of expertise include advising on the assignment, licensing, franchising and transfer of IP rights between foreign enterprises and their local counterparts. Shirley Alinea, who is an accredited arbitrator of the Intellectual Property Office of the Philippines, and Manuel Gonzalez are also key contacts.

Practice head(s):

Kristine Bongcaron

Other key lawyers:

Shirley Alinea; Manuel Gonzalez

Key clients

Michael Allen R. Cacnio

Spoiled Mummy Corporation

Torre Lorenzo Development Corporation

Torre Lorenzo Holdings Corp.

Philippine Payments Management, Inc.

Cerilles & Fernan Intellectual Property Law (CFIP Law)

Counting SMEs and multinational companies among its key roster of clients, specialist IP firm Cerilles & Fernan Intellectual Property Law (CFIP Law) has experience in filing patent and trademark applications, with demonstrable capability in IP litigation. Mario Cerilles handles a variety of trademark infringement cases, in addition to matters concerning copyrights, while Harry Fernan advises on the foreign prosecution of patent and trademark applications, as well as data privacy issues.

Practice head(s):

Mario Cerilles; Harry Fernan

Key clients

Ice Cream Lovers

Pets and Co.

Dr. Vitto Corporation

Pap’s BarbershopInc.

FR Farmorganics Incorporated

Guangzhou Leader Bio-Technology Co., Ltd.

Foshan Leader Bio-Technology Co., Ltd.

Amazonas For U Limited

BRAVE Global W.L.L.

Binibini Fashion Design

Instill, Inc.

Panublix

TechMatch, Asia Inc.

Ta-ala Farms, Inc.

City Advertising Ventures Corporation

SlashIgnite

Philippine College of Lifestyle Medicine

NativeBagsPH

CulinaryMD

Fresh Start

AxiomMark

Gorriceta Africa Cauton & Saavedra

Lucas Niccolo Cauton and Micaela Kristina V. Galvez jointly lead the IP practice at Gorriceta Africa Cauton & Saavedra. The team handles an array of trademark registration and enforcement issues.

Practice head(s):

Lucas Niccolo Cauton; Micaela Kristina Galvez

Key clients

Sunnies by Charlie, Inc.

Regent Food Corporation

Xurpas Inc.

Doorbell Technologies, Inc.

Kua Sy & Yeung Law Offices (SKY Law)

Led by 'dedicatedKurt Glen T. Yeung, the team at Kua Sy & Yeung Law Offices (SKY Law) handles a range of trademark matters, from advising on the registrability of a proposed mark to assisting in the maintenance of trademarks. The group is also well-placed to prosecute cases for infringement, passing-off and unfair competition.

Practice head(s):

Kurt Glen T. Yeung

Testimonials

‘SKY Law has been providing us with excellent legal advice and assistance in filing our local and international trademarks and patents. Their timely responses, honest opinions and suggestions are crucial to our overall trademarking strategy.’

‘Kurt Yeung, a senior partner, has been personally handling our trademark and patent concerns. His vast knowledge on local and international policies has proven to be beneficial for us.’

‘Yeung has opened the doors for us to connect with international law firms for our trademark requirements beyond the country. Yeung also provides candid and honest opinions on how we should proceed with our applications.’

‘The team has a complete service offering that is typically needed by businesses.’

‘Kurt Yeung has shown he is very well-versed with IP laws. I find him very dependable and goes the extra mile.’

‘Their knowledge of the practice and their expertise, willing to take time to collaborate with clients that makes sure you clearly understand what you need to know.’

‘Kurt Yeung is a very good legal adviser and dedicated to his clients. He is very practical and yet very protective to client.’

Key clients

Marketventure Distributor Sales, Inc.

Innovative Packaging Industry Corporation

Manila Embroidery Gold Inc.

Inspira Prime International Corporation

Landlite Philippines Corporation

Kensonic, Inc.

Eat Fresh Food Deli Corporation/ So Huat Trading OPC

Work highlights

  • Assisted Landlite Philippines Corporation in responding to official actions for its pending trademark application.
  • Continuing trademark portfolio management for Marketventure Distributor Sales Inc. and Innovative Packaging Industry Corporation.
  • Assisting Inspira Prime in its Madrid trademark requirements.

Poblador Bautista & Reyes

Poblador Bautista & Reyes handles the registration of patents, trademarks and copyrights, in addition to advising on technology transfers, licensing agreements and engaging in the prosecution of infringements and unfair competition cases. Gilbert Reyes leads the team and focuses on the protection and enforcement of IP rights.

Practice head(s):

Gilbert Reyes

Key clients

Intel Corporation

Gaztransport et Technigaz

Nutri Asia, Inc.

Aviemore Holdings LLC

San Miguel Corporation

Ginebra San Miguel Inc.

Levi Strauss and Co.

Work highlights

  • Represented Levi Strauss & Co. in protecting its trademarks.
  • Representing Intel Corporation in various actions and proceedings before the Intellectual Property Office and other agencies to cancel names and marks that infringe upon Intel’s world-famous trademarks, and in the execution and implementation in the Philippines, of Intel’s worldwide trademark protection initiatives.
  • Representing San Miguel Corporation, and subsidiaries, particularly Ginebra San Miguel, Inc. in the protection of its well-known marks.