Intellectual property in Philippines
Full-service firm Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALaw) has a strong IP department, which fields lawyers with technical and legal qualifications and who are members of local, regional and international IP organisations. Its client base comprises domestic and multinational companies, including household name brands. The busy department excels in high-profile, complex and novel IP cases. In a recent highlight, it successfully acted for major Philippine conglomerate San Miguel in opposing the registration of the “Magnolia Bakery” mark filed by Magnolia Intellectual Property LLC; the decision affirms the reputation and popularity of San Miguel’s “MAGNOLIA” mark, which is used on various dairy products. Non-contentious work also features among the team's workload. Alex Ferdinand Fider and Richmond Lee are key practitioners.
Fraser & Neave (Singapore)
Energizer Holdings, Inc. (USA)
The Estee Lauder Group of Companies (USA)
Bayer AG (Germany)
Jardine Matheson Group of Companies (Hong Kong)
Roche AG (Switzerland)
San Miguel Group of Companies (Philippines)
Sappe Public Co. Ltd. (Thailand)
CoStar Group, Inc. (USA)
Bandai Co., Ltd. (Japan)
Hershey’s Chocolate & Confectionery Corporation (USA)
Asian Honda Motor Co., Ltd. (Thailand/Japan)
- Represented San Miguel in successfully opposing the registration of “Magnolia Bakery” mark filed by Magnolia Intellectual Property LLC.
- Represented Roche in one of the first patent infringement actions involving biologics and biosimilars in the Philippines.
- Successfully represented Estee Lauder in filing an opposition against the registration of the trademark “J. MAC ESSENTIAL”, which was found to be confusingly similar to Estee Lauder’s well-known “MAC” cosmetic brand.
Baranda & Associates
A member of the Rouse network, Baranda & Associates acts for high-profile companies with significant IP portfolios, including Prada, Nestlé and Unilever. Although best known for its enforcement and trade mark expertise, the team is also increasingly active in patent infringement and litigation. Recent highlights included advising Costco on a Bureau of Customs raid action conducted in 2019 against the operator of a storage unit selling counterfeit Prolife Atlas Vitamin E vitamins and food supplements; around 1,600 bottles of counterfeit products were seized. Edmund Jason Baranda and Claire Corral are the partners to note. Senior associate Raymond Pasiliao – who joined the firm in 2018 from an in-house position – is another key contact.
COSTCO WHOLESALE CORPORATION
Nestle Skin Health, S.A. (Galderma)
V.F. Corporation (Wrangler Apparel)
V.F. Corporation (The H.D. Lee Company)
- Represented Prada for enforcement action against Greenhills targets.
- Acted for POPSOCKETS in a Bureau of Customs raid action conducted in 2019 against several targets selling counterfeit POPSOCKETS products; the raids resulted in the seizure of approximately 4,000 pieces of counterfeit POPSOCKETS products.
- Acted for Costco in a raid action against the operator of a storage unit; the raid resulted in the seizure of around 1,600 counterfeit products.
The 'flexible' IP team at Cruz Marcelo & Tenefrancia advises on IP commercialisation and marketing, patent applications, unfair competition and domain name issues. Its lawyers have backgrounds in physics, chemistry and engineering, among other fields, and some members of the team are qualified as patent agents. On the contentious side, the team has experience in administrative and judicial tribunals at all levels. The team also stands out for its particular knowledge of the pharma sector, where it advises major companies on contentious and non-contentious IP matters. Department head Susan Villanueva represents companies in the broadcasting, consumer care, pharma, IT, manufacturing and financial services sectors in IP cases.
‘The team is flexible in its delivery of final IP valuations. Each comment was individually acknowledged and resolved, and the lawyers were quick to adapt to the increasing requirements demanded of their output‘.
Novex Science PTE Limited
Samsung Electronics Philippines Corporation
JT International, SA
Garmin International, Inc.
Pilipinas Shell Petroleum Corporation
University of the Philippines
Dole Philippines, Inc.
Filinvest Land, Inc.
Ten Knots Philippines, Inc.
Ortigas & Company, Limited Partnership
Technological Institute of the Philippines
Nestle Philippines, Inc.
San Miguel Pure Foods, Inc.
Green Cross, Inc.
La Filipina Uy Gongco
- Handles the trademark portfolio of Max’s Group, a major casual dining restaurant company in the Philippines.
- Assisted Ferrero in enforcing its “NUTELLA” mark against Tropicana Food Products concerning the latter’s “COCOTELLA COCONUT COCOA SPREAD”.
- Advises real estate developer Filinvest Land on its trademark applications filed under the Madrid Protocol and the Paris Convention.
Martinez Vergara Gonzalez & Serrano advises on IP registration processes, infringement and portfolio management, and it is particularly strong in trade marks. The IP department's clients include companies in the healthcare, financial services and real estate sectors, among others. As an example, the team assists DKT International, a major provider of family planning and reproductive health products, on the management of its trade mark portfolio. Shirley Alinea co-heads the practice and is also an accredited arbitrator of the IPOHL. Manuel Gonzalez, who co-founded the firm and leads the practice alongside Alinea, has broad expertise in IP, corporate and commercial law.
Other key lawyers:
Armscor Global Defense, Inc. (formerly Arms Corporation of the Philippines)
Flexi Finance Asia
Kriska Assenmacher/ Ingrid L. Calubaquib
Michael Allen R. Cacnio
Pon Bicycle Holding B.V.
Spoiled Mummy Corporation
Torre Lorenzo Development Corporation
Torre Lorenzo Holdings Corp.
Institute For Inner Studies Publishing Foundation
- Manages reproductive health products company DKT International’s trade mark portfolio; in the Philippines, the company has over fifty active marks in its portfolio registered with the Intellectual Property Office of the Philippines (IPOPHL).
- Acts as the registered representative for Flexi Finance’s registered marks with the IPOPHL, and also serves as the authorised representative for the company’s trade mark applications.
- Assisted Flexi Finance with the registration of the “Flexi Finance” word mark in Czech Republic through the World Intellectual Property Organization (WIPO), under the Madrid Protocol.
IP is one of the key focus areas at mid-sized firm Ortega Bacorro Odulio Calma & Carbonell, which has a long history in the Philippines market. Its clients - many of which have been working the firm for several decades - seek the team's advice and representation in anti-counterfeiting measures, trade mark opposition and prosecution and patent litigation. Among its clients is Emperador Distillers; Roane Lopez and senior associate Ruby Ann Jalit assist the brandy maker in cross-border trademark transactions, oppositions, and registrations, often working with correspondents from the EU, the US, UK, Africa and Southeast Asia. As part of the firm's move towards full automation of its systems, it utilises specialised management software for its case files and IP work, increasing its efficiency in this space.
The Harris Group
- Undertook a nationwide anti-counterfeiting program for the Lincoln Electric/Harris Group, which involved the prosecution of manufacturers, importers and distributors of fake welding equipment and various other products.
- Represents Emperador Distillers in several cross-border trade mark transactions, oppositions and registrations; recently, this included prosecuting a trade mark opposition and trade mark cancellation in China.
- Represents The Fellows of Harvard College in several cases filed against unauthorised users of the name “HARVARD”.
Baker McKenzie member firm Quisumbing Torres maintains a broad and busy IP department. It stands out for its high-profile and innovative work in the IP space, particularly with regards to anti-counterfeiting measures. In an example, a team led by practice head Bienvenido Marquez assisted Hyundai Mobis in its global anti-counterfeiting programme, which involved the coordination of raids against three establishments in Manila. The firm uses a global IP management (GIPM) web-based tool to effectively and efficiently manage substantial client portfolios. Bienvenido Marquez III and Divina Ilas-Panganiban are key partners in the practice, and Reena Mitra-Ventanilla is a new partner in the team.
Business Software Alliance
Potbelly Sandwich Shop
WD-40 Manufacturing Company
Brit-Phil Enterprise Limited / Sarapino Global Foods Limited
- On behalf of Mang Inasal Philippines, filed and prosecuted an opposition case against the application for the registration of a trade mark in the name of a local company, which is confusingly similar to the client’s famous mark.
- Assisted Hyundai Mobis in its global anti-counterfeiting programme, and also assisted in the successful settlement of the civil aspect of the criminal cases for infringement.
Widely recognised for IP work in the Philippines, SyCip Salazar Hernandez & Gatmaitan covers trade marks, patents and copyright, handling a range of contentious and non-contentious matters. It has recently secured a number of successes for clients in trade mark opposition proceedings. The firm has strength across the board, and its TMT and corporate M&A know-how are of benefit in licensing, technology transfers and other IP-related transactions. The team counts household name companies and brands among its clients, many of which have been seeking the team's assistance in IP matters for over 10 years. Vida Panganiban-Alindogan heads the sizeable team. Former practice head Enrique Manuel retired in 2018, but continues to act as of counsel.
Other key lawyers:
F. Hoffmann-La Roche AG
Tupperware Brands Corporation
- Advises AbbVie on all aspects of intellectual property, which include branding and trademark issues, specialised and strategic IP portfolio management, IP protection and enforcement, infringement and unfair competition.
- Advises Colgate-Palmolive on a broad range of IP matters, including IP portfolio management, protection and enforcement.
- Represented Zippo Manufacturing Company in its opposition proceeding involving the trademark AOMAI before the IPOPHL.
Bienvenido Somera Jr heads the department at Villaraza & Angangco (V&A Law), which has the size and experience to handle all aspects of IP, from trade mark and patent prosecution to border control measures to copyright registration. Recent areas of growth include IP commercialisation and over-the-top (OTT) regulatory advice, among others, and the team also expanded its already sizeable client base with new client wins in the healthcare and media sectors. The department has specialised IP litigation lawyers, and a number of members of the team have technical backgrounds. Junior partner Katrina Doble draws on over 14 years' experience in IP, with a special focus on trade mark law and IP litigation.
Other key lawyers:
Franck Muller Group
Kia Motors Corporation
Kawasaki Heavy Industries
Paris Croissant Co.
Hyundai Motor Corporation
BigHit Entertainment Co.
UCC Holdings Co.
AIMA Technology Group Co.
Mystery Ranch, Ltd.
Santoni Societa’ per Azioni
LKK Health Products Group Limited
Opus One LLC
- Filed, on behalf of client Innogen, four patent cancellation cases – two for Etoricoxib and two for Sitagliptin – to pave the way for the introduction of Innogen’s generic alternatives.
- Acted for BDO Unibank in filing a trademark opposition case against Nippon Express Co., Ltd.’s “WE FIND THE WAY” application.
- Successfully defended F&CO Co. in an opposition case filed by a local competitor; the successful defence of F&CO’s marks will allow the company to further expand its business in the Philippines.
Betita Cabilao Casuela Sarmiento
Well-established IP firm Betita Cabilao Casuela Sarmiento 'provides practical legal advice based on an in-depth knowledge of the law and the team's thorough understanding of the client's business'. It balances a varied IP workload, and has recently been particularly active in IP disputes. The firm is also the Philippine partner of REACT, a not-for-profit organisation fighting the trade in counterfeits. Managing partner John Paul Cabilao and associate Ronna Echavez are singled out for praise.
‘The team’s legal advice not only considers the issue at hand but also how such advice fits in the client’s overall IP strategy‘.
‘John Paul Cabilao is very reliable; his legal advice is practical, on-point and adds value‘.
‘Ronna Echavez is an excellent associate who has been providing tremendous legal support to her clients‘.
Platon Martinez Flores San Pedro & Leaño added a number of significant new clients to its already extensive IP client base; among them are large companies in the healthcare and food and beverage sectors. Recently, the team has been busy advising on trade mark searches, applications, oppositions - including defending clients against opposition proceedings - and enforcement. Augusto San Pedro and Jenny Santiago are the practice heads.
- Prosecution of trade mark applications for new clients (direct and via Madrid Protocol).
- Acted for household name companies in trade mark protection and enforcement through the filing and prosecution of oppositions against infringing trademark applications.
Romulo Mabanta Buenaventura Sayoc & De Los Angeles covers the full range of IP work, including filing, enforcement, litigation and prosecution of patents, trade marks and copyright, domain names, licensing, electronic commerce, cyberspace and software issues.
Agcaoili & Associates
Belo Gozon Elma Parel Asuncion & Lucila
Castillo Laman Tan Pantaleon & San Jose
Castillo Laman Tan Pantaleon & San Jose advises on trade marks, patents, copyright and other forms of IP rights. Clients come from industries including fashion, pharmaceutical, chemical, consumer health, and oil and gas.
Federis & Associates
Boutique IP firm Federis & Associates fields a team of experienced lawyers, licensed patent and trademark agents, engineers, paralegals and technical staff. Domestic and international companies utilise the firm's services in patents, trade marks, copyrights and designs, and the team also advises on licensing and contracts. Its IP litigation is worthy of note, and the group recently secured two favourable decisions at the Supreme Court in trade mark litigation. Managing partner Mila Federis heads the practice, and is supported by associate Amanda Carlota and others.
- Represented paper manufacturer Asia Pacific Resources International Holdings in an action for unfair competition, trade mark infringement, and damages filed against rival Paperone, which went to the Supreme Court.
Fortun Narvasa & Salazar
Bayani Loste heads the IP department at Fortun Narvasa & Salazar. In 2018 and 2019, the team was particularly busy handling the prosecution of patent applications for inventions, utility models and industrial designs generated by research and development institutions in the Philippines, including universities and the Department of Science and Technology. The team also stands out for its ability to provide valuation reports on government technologies that have been chosen for commercialisation.
Other key lawyers:
Department of Science and Technology
Philippine Council for Health Research and Development
Metals Industry and Development Institute
FRONTIER ORTIGAS HOTEL AND RESORT CORPORATION
Diversify Intelligent Staffing Solutions
GREAT IMAGE SERVICES CORPORATION
Hotel Okura Manila
Calayan Surgicentre Corp.
- Drafted and filed 180 patent applications and generated 19 freedom-to-operate opinions.
Gorriceta Africa Cauton & Saavedra complements its impressive TMT practice with a broad IP offering; it advises on patents, trade marks, disputes and IP strategy. Its patent attorneys have knowledge of IT, electric and electronic engineering, chemistry and life sciences. The IP department also benefits from the firm's strategic alliance with Singapore-based IP specialist firm Yusarn Audrey. Lucas Niccolo Cauton III is the practice head and is well versed in IP and other litigation.
Other key lawyers:
Sunnies by Charlie
- Assisted an individual client in registering the trademark of his business enterprise based in the US.
- Acted as counsel to Sunnies by Charlie for the oppositions filed by the client against third parties who used confusingly similar logos.
The IP team at JGLaw covers a wide range contentious and non-contentious work. Clients come from the telecoms, automotive, retail, food and beverage, chemical, pharmaceutical, cosmetics, and entertainment industries.
Picazo Buyco Tan Fider & Santos
Picazo Buyco Tan Fider & Santos's IP practice includes registration, assignment, licensing, protection and enforcement.
Poblador Bautista & Reyes
The IP practice at Quiason Makalintal Barot Torres Ibarra Sison & Damaso is led by Joel Espinueva and handles contentious and non-contentious matters, including representing companies in actions against trade mark infringement, counterfeiting, piracy and unfair competition. The group recently added new client Fil Pacific Apparel Corporation to its established client base.
Healthy Options Corporation
Sky Cable Corporation
Rockwell Land Corporation
Fil Pacific Apparel Corporation
The trade marks department at VeraLaw (Del Rosario Raboca Gonzales Grasparil) has recently handled a number of applications and oppositions. Its diverse client portfolio includes leading automotive, aviation and pharma companies; its clients benefit from the firm's sophisticated database management programme VERASMART IP, allowing them to access their trade mark portfolios online and verify the status of the marks. In team news, Maria Francesca Bautista was promoted to senior associate. Maria Theresa Gonzales is the key contact at the partner level.
Hyundai Motor Company
Monsanto (Now Bayer Crop Science)
- Successfully opposed the trade mark applications for two marks, which were regarded as confusingly similar to the trade mark of a client.