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Intellectual property in Philippines

Baranda & Associates

A member of the Rouse network, Baranda & Associates provides a full range of IP advice to some of the world’s leading brands. The firm has a strong trademark and copyright contentious practice and often conducts raid actions for various clients against targets that are engaged in the sale and distribution of counterfeits. The firm has a particularly strong prosecution practice, managing portfolios for multinationals such as GSK, Harley-Davidson and Mars. Continuing to strengthen its reputation in patents, the firm works with the Technology Application and Promotion Institute of the Department of Science and Technology. The team is lead by Edmund Jason Baranda and Claire Corral.

Other key lawyers:

Ellen Rico-Claro

Key clients

Fred Perry

Shell Brands International

Total

Prada

V.F. Corporation (Wrangler Apparel Corp.)

LRC Products Limited / Reckitt Benckiser

Work highlights

  • Represented Prada in enforcement action against targets in a popular mall, Greenhills Shopping Center.
  • Represented VF Corporation (Wrangler Apparel Corp) in criminal filings after discovering that counterfeit Wrangler jeans were being distributed and sold by the party in question.
  • Represented LRC Products in an investigation of the distributor of Dipzy Corn Pop lollipop, which was reported to have manufactured candy products with unauthorized use of the client’s product packaging, and subsequently filed a complaint with the Food and Drug Administration.

Cruz Marcelo & Tenefrancia

Cruz Marcelo & Tenefrancia provides a full range of IP services ranging from trademark maintenance and monitoring to patent litigation. The practice is led by Susan Villanueva who is known as an expert in patent litigation, especially regarding pharmaceutical patents. Villaneuva was lead counsel in a dispute involving a high-profile drug where the firm successfully defended the client in the patent infringement suit. Divina Gracia E. Pedron is recognised as a ‘reliable and trusted adviser for matters involving intellectual property protection’. 

Practice head(s):

Susan Villanueva

Testimonials

‘The team is very responsive, professional and provides the needed information quickly.’

‘Great in providing insights, recommendations and always available.’

‘The team is attentive, responsive, and collaborative in its approach to engagement management. The team has a reliable network of foreign correspondent firms that facilitate trademark registration in other jurisdictions.’

‘Divina Pedron is a reliable and trusted adviser for matters involving intellectual property protection, particularly for our international franchising arm. Her responses to routine queries are always comprehensive and timely and we depend on her advice and assistance when dealing with material and urgent issues concerning the registration of our trademarks offshore. She has a good grasp of the commercial dimension of our engagements and considers the same in crafting the plan of action.’

Key clients

JT International

In-N-Out, Burgers

PT. Inertia Utama (Dexa Group)

Department of Science and Technology – Technology Application and Promotion Institute

San Miguel Food and Beverage

United Laboratories

Ayala Group Legal

Max’s Group

Vice Cosmetics Group

University of the Philippines

Lazada E-Service Philippines

Oriente Express Techsystem Corporation

Chroma Hospitality/ Filinvest Hospitality Corporation

Makati Development Corporation

Marine Resources Development Corporation

Metromart Technologies

Work highlights

  • Represented Lazada in proceedings relating to the reclassification and reassignment of a complaint filed against it from an ordinary court to a special commercial court with the authority to handle intellectual property cases.
  • Advised Sunmaru on the enforcement of it’s mark against a confusingly similar mark filed by a one of the most popular retailers of luxury jewellery which covers non-competing goods but within client’s normal expansion of business.
  • Advised Nestle Philippines on obtaining the appropriate Certificates of Compliance covering the licensing contracts between NPI and its mother company, within two weeks of the initial request.

Ortega Bacorro Odulio Calma & Carbonell

Ortega Bacorro Odulio Calma & Carbonell‘s wide-ranging practice is equally strong in patent law and trademark law, with Roane Lopez specialising in patent work and Virna Emeline Caringal-Divino leading the trademark team. The team has grown substantially in recent years with three new associates joining to train as IP practitioners. The firm advises major multinationals in the Philippines such as Samsung and Bayer.

Key clients

Isuzu Japan

Isuzu Motors Philippines

Bayer

Takeda

Lincoln Electric

The Harris Group

Emperador Distillers

Samsung

NBA Properties

President and Fellows of Harvard College

Work highlights

  • Advising Lincoln Electric and The Harris Group on the implementation of anti-counterfeiting measures.
  • Advising one Izuzu Japan and Izuzu Philippines on customs enforcement of its trademarks to bar entry of unauthorized products.
  • Advising NBA Properties on maintaining the registry of team names and trademarks and implementing anti-counterfeiting measures against infringers and unauthorized distributors.

Quisumbing Torres

Praised as ‘one of the best in the country‘, Quisumbing Torres‘ practice is a go-to for companies seeking advice on licensing and franchising, technology transfer, IP prosecution, IP litigation, and enforcement actions. The firm also handles emerging issues involving data privacy and cybercrime. As a member of Baker McKenzie's international network, the team has access to global resources, whilst also benefitting from having a strong presence on the ground in the Philippines. Practice head Bienvenido Marquez is a key individual at the firm, having successfully represented a global biopharmaceutical company throughout a patent infringement case by a local pharmaceutical company. Divina Ilas-Panganiban is recommended for ‘providing simple solutions to seemingly complex legal issues’.

Practice head(s):

Bienvenido Marquez

Testimonials

‘The firm has provided outstanding work through the years. They consistently provide clear and concise legal advice, and strong administrative support in liaising with their other offices in foreign countries. I am impressed by Quisumbing Torres as they give legal advice with a keen understanding of our business by doing their own research on what our business and company are about. ’

‘I primarily work with Divina Ilas-Panganiban and her team in Manila. She is also the pointperson/coordinator for matters handled in other jurisdictions where our company has trademark applications/registrations. Her clear and concise legal advice shows her understanding of our business. She also provides simple solutions to seemingly complex legal issues especially in light of the recent trademark developments in the Philippines. I admire her consistent quality of work and client care.’

‘The team is an expert in the field, very knowledgeable, and works fast. They respond immediately to my queries.’

‘Special shout out to Vina Ilas-Panganiban and Neonette Pascual who are both dedicated to the service of their clients and respond immediately to my queries.’

‘The team’s expertise on the subject is one of the best in country that I have seen. They are quick to respond and consider business objectives in providing advise, not merely theoretical. QT is part of the global network of Baker McKenzie providing the firm unique access to global development and trends.’

‘The lawyers I deal with on a regular basis understand the business and culture of the company I represent. This enables the lawyers to provide business-relevant opinion and insights.’

Key clients

Alphabet/Google

GlaxoSmithKline

L’Oreal

Novartis

Prudential

Work highlights

  • Assisted a global bio-pharmaceutical company in a patent infringement by a local pharmaceutical company that produced, sold, and marketed in the Philippines its patented pharmaceutical products that deal with chronic hepatitis B virus infection.
  • Acted on behalf of a software developer against an end user infringer and successfully obtained a conviction against the officers of the end user company – the very first conviction against an end user in the Philippines.
  • Assisted a leading fastfood chain with stores worldwide in obtaining a declaration that its mark is well-known internationally and locally.

SyCip Salazar Hernandez & Gatmaitan

SyCip Salazar Hernandez & Gatmaitan is particularly well known for advisory work on branding and trademark issues, specialized and strategic IP portfolio management, and IP protection and enforcement. The firm’s client list ranges from high-profile luxury goods to global pharmaceutical companies. The firm frequently represents clients such as H&M and Hallmark Cards in trademark infringement proceedings against opposing parties filing for similar trademarks. Vida Panganiban-Alindogan heads up the team, advising clients on domain name issues, as well as copyright and trademark issues in social media.

Practice head(s):

Vida Panganiban-Alindogan

Other key lawyers:

Anthony Dee ; Russel Rodriguez

Key clients

F. Hoffmann-La Roche

Dyson Technology

Gap

AbbVie

Chanel

Rolex

Total

Colgate-Palmolive Company

Pfizer

Tupperware Brands Corporation

Bostik Philippines

Work highlights

  • Represented H&M Hennes & Mauritz in a trademark infringement case before the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines.

Villaraza & Angangco (V&A Law)

Villaraza & Angangco (V&A Law) handles the full gamut of IP-related matters including both trademark and patent prosecution as well as advisory services. The firm has handled several trademark opposition cases for ABS-CBN, the Philippines’ largest multimedia conglomerate, against Apple for the protection of ABS-CBN’s primary trademark. Practice head Bienvenido Somera is lead counsel on these ongoing matters and is known for being an ‘adept litigator’. Katrina Doble and Mark Leo Bejemino are recommended for being ‘very competent, responsive and reliable.’ 

Other key lawyers:

Mark Leo Bejemino

Testimonials

‘I have worked with V&A for more than 5 years in particular on IP and regulatory matters, especially in the healthcare and life sciences sector. What struck me most was their extremely quick responsiveness and thoroughness in addressing the work that needed to be done. They are very professional and knowledgeable in the areas of law that I use them for. ’

‘Bienvenido I Somera, Jr is the partner that I will turn to for legal work that I require. He is able to manage and direct the work efficiently within the firm. I will strongly recommend him.’

‘We engage Villaraza & Angangco for intellectual property matters, i.e. our company’s brand protection program. We’ve been working with them for many years so they have acquired substantial experience in the field.’

‘The partner-in-charge Bienvenido  Somera is always available for quick consults. He’s very adept in litigation, not only on intellectual property laws. We also work with Katrina Doble and Mark Leo Bejemino who are both very competent, responsive and reliable.’

Key clients

Getz Pharma Phils

Petron Corporation

BDO Unibank

Descorp

ABS-CBN Corporation

F&CO

LKK Health Products Group

UCC Holdings

Decathlon

Jules Taylor Holdings

Paolo Roberto Mercado Martel

HBO Asia

Work highlights

  • Represented Petron in successful criminal proceedings against employees of Omni Gas Corporation, for illegal refilling, trademark infringement and trademark infringement in relation to Petron Corporation’s LPG brand.
  • Advised Getz on the feasibility and appropriate actions for the entry of its generic pharmaceutical products into the Philippine market.
  • Advised Descorp on a favorable compromise and co-existence agreement between Suyen Corporation and Descorp allowing Descorp, Inc.’s continued use and expansion of the “QUICKFX” brand.

Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALaw)

Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALaw) has a particular focus on trademarks, having advised a number of large Philippine conglomerates on trademark applications and intellectual property rights enforcement proceedings. The firm successfully represented Orafol in opposing the applications for registration of a trademark that was deemed by the Intellectual Property Office of the Philippines to be confusingly similar to Orafol. Leading the practice are Alex Ferdinand S. Fider and Richmond K LeeVictor De Leon is another name to note; he represented a major US fast food restaurant chain in successfully prosecuting an infringement and unfair competition case against a local company before the Supreme Court.

Other key lawyers:

Victor De Leon

Key clients

Fraser & Neave

Energizer Holdings

The Estee Lauder Group of Companies

Bayer

Jardine Matheson Group of Companies

Monde Nissin Corporation

San Miguel Group of Companies

BP

Bandai Co

Hershey’s Chocolate & Confectionery Corporation

Asian Honda Motor Co

 

 

Work highlights

  • Represented Orafol Europe in opposing the applications for registration by Stickerworld of several “ORA-“ prefixed marks.
  • Represented Energizer in opposition proceedings for the conflicting mark “EnerMax”.
  • Advised the Monde Nissin Corporation on filing a petition with the Bureau of Legal Affairs to cancel an Appellant’s registered mark.

Betita Cabilao Casuela Sarmiento

Betita Cabilao Casuela Sarmiento has particular expertise in trademarks, advising a number of Fortune 500 companies in the sports, food, entertainment, and clothing industries. Practice head Andre Betita has a strong track record of successfully litigating precedent-setting cases on copyright infringement and trademark infringement before the Philippine Supreme Court. With the recent adoption of the Philippine Data Privacy Law, Pericles Casuela has been advising clients on data privacy protection and compliance requirements. The firm is also very active in the enforcement of IP rights and regularly conducts criminal search and seizure actions on behalf of its clients. The firm is the Philippine partner of REACT, a not-for-profit organization with over 30 years of experience in fighting the counterfeit trade.

Practice head(s):

Andre Betita

Other key lawyers:

Pericles Casuela

Federis & Associates

Federis & Associates is a boutique firm focused exclusively on IP. Practice head Mila Federis is well recognised as being an expert in the field and is recommended for being ‘knowledgeable, efficient and responsive’. The firm represented and obtained a favourable decision for its client Asia Pacific Resources International Holdings in an unfair competition and trademark infringement case which was escalated up to the Supreme Court. Montini Felicilda heads the firm’s enforcement arm and has previously worked at the Intellectual Property Office of the Philippines.

Practice head(s):

Mila Federis

Other key lawyers:

Montini Felicilda

Testimonials

‘Mila Federis is knowledgeable, efficient and responsive’.

‘Their team, led by Mila Federis, is highly impressive, vastly experienced in IP law, is diligent and professional and provides high-quality legal advice on all IP matters’.

‘Mila Federis is one of the most distinguished legal practitioners in IP law in the Philippines.’

‘We have come to rely on Mila’s expert opinion on all IP matters in the Philippines for a long time now and till date, we have been extremely satisfied with the legal services provided by her and her team.’

Key clients

Chanel

Philip Morris

Under Armour

Uniqlo

Bridgestone

Philips

IKEA

Yahoo! (Oath Inc./Verizon)

Best Buy

Marriott International

GoPro

Universal Studios

Universal Music Group

Beiersdorf

Otsuka Pharmaceutical

ABS-CBN

Work highlights

  • Represented and obtained a favourable decision for Asia Pacific Resources International Holdings in an unfair competition and trademark infringement case in the Supreme Court.
  • Represented and obtained several favourable decisions for Chanel in various opposition cases in the IPOPHL.
  • Represented and obtained several favourable decisions for Bridgestone in various opposition cases in the IPOPHL.

Gulapa & Lim (Gulapa Law)

Gulapa & Lim (Gulapa Law) handles trademark and patent registrations, as well as disputes arising from patent, copyright and trademark infringement, led by practice head Oliver Baclay. The firm is adept at handling complex cross-border work, namely assisting Frontiir in the national phase entry of two inventions under the framework of the Patent Cooperation Treaty in eleven jurisdictions in Asia. The team is known to be ‘accessible’ and displays 'great knowledge’ of clients’ industries.

Practice head(s):

Oliver Baclay

Other key lawyers:

Isabelle Poblete

Testimonials

‘Great knowledge of our industry. Very good value, and accessible team.’

Key clients

Francorp Philippines

Phar Philippines

Day1Tech

Machuca Baldozas

APO-UGEC Security Printing Joint Venture

Maria Francesca Tan Group of Companies and Mondial Medical Technologies

Phil Jacobe Ventures

United Graphic Expression Corporation

Island Air Products Corporation

ChromewellInnovative Solutions

Kelvin Ngo

Frontiir

Fashion Box

Intake TM

Asian Development Bank

Work highlights

  • Advising APO Production Unit and United Graphic Expression Corporation on the implementation of their joint venture agreement to upgrade APO’s printing facility to become a world-class high-security printer to enable APO to print the Philippine Passport.
  • Advised the Asian Development Bank on the legal implications of implementing the BRT System on currently held Intellectual Property rights over similar systems in the Philippines.
  • Advising Intake on the registration of trademarks in 13 jurisdictions using the legal framework provided for in the Madrid Protocol.

Martinez Vergara Gonzalez & Serrano

Martinez Vergara Gonzalez & Serrano advises clients across various industries on their intellectual property rights, from rights protection to administration and maintenance. The firm further advises clients on contractual concerns with licensees and other third parties. Well-respected in the intellectual property field, Shirley Alinea heads the practice, and is also an accredited arbitrator of the Intellectual Property Office of the Philippines (IPOPHL). Manuel Gonzalez is a go-to contact for drafting, negotiating, and reviewing IP-related transactions and contracts.

Practice head(s):

Shirley Alinea

Other key lawyers:

Manuel Gonzalez

Key clients

Spoiled Mummy Corporation

Torre Lorenzo Development Corporation

Torre Lorenzo Holdings

Institute For Inner Studies Publishing Foundation

ISOC Holdings

Philippine Payments Management

BDO Unibank

BDO Capital & Investment Corporation

Michael Cacnio

Work highlights

  • Advised Philippine Payments Management on its registration of the PESONet and instaPay trademarks.
  • Advised BDO on negotiating reasonable terms and periods to complete the removal of Nomura’s name in the “BDO Nomura” name, trade names, and brand.
  • Advising Michael Cacnio on the registration and protection of his trademark which figures prominently in his artworks.

Cerilles & Fernan Intellectual Property Law (CFIP Law)

Boutique firm Cerilles & Fernan Intellectual Property Law (CFIP Law)  provides comprehensive intellectual property support, including the filing of patent and trademark applications and actions in the event of infringements. The firm has a strong reputation in litigation, having defended Dr. Vitto Corproration in a trademark opposition case filed by a competitor. Practice co-head Mario Cerilles  is a highly qualified specialist IP practitioner. Co-head Harry Fernan  led the team in trademark opposition cases filed by Guangzhou Leader Bio-Technology.

Practice head(s):

Mario Cerilles; Harry Fernan

Key clients

Panublix

Pets and Co

Dr. Vitto Corporation

Boba Warma Food and Beverage House

Guangzhou Leader Bio-Technology Co

Foshan Leader Bio-Technology Co

Instill Inc.

City Advertising Ventures Corporation

Axiom Mark

Work highlights

  • Represented Guangzhou Leader Bio-Technology in opposition cases against the trademark applications of its distributor.
  • Advised Instill on copyright registration for the book The Trading Code.
  • Advised Panublix on intellectual property rights relating to indigenous textile designs and other textile designs.

Disini & Disini Law Office

Disini & Disini Law Office offers expertise in a wide range of issues relating to intellectual property law, advising on the registration, maintenance, and enforcement of intellectual property rights. The firm formulates strategies and solutions in trademark management, copyright counseling, and patent registration for clients in e-commerce, biotechnology, cross-border digital logistics, and information technology sectors. JJ Disini, Rowena Disini, and Lars Serzo share the leadership of the practice.

Testimonials

‘Very progressive, even on emerging issues and topics around fintech and e-commerce, they are able to provide sound and useful advice.’

‘Lars Serzo is updated with the latest trends, gives well-rounded advice. JJ Disini offers very useful advice for top management perspective.’

Key clients

DataOne Asia

Ideaspace Foundation

Work highlights

  • Advised one of the largest insurance companies in the world on alleged violations in its license agreements with an international US-based software company.
  • Advised a leading logistics provider on a trademark application, which was opposed by a US-based photo/video sharing social networking giant.
  • Advised a regional operator of an Asian digital marketplace on registration and maintenance process for several trademarks.

Fortun Narvasa & Salazar

Fortun Narvasa & Salazar stands out for its patent work; drafting, filing, and prosecuting patent applications for universities and institutes such as the University of the Philippines Baguio and the Technological Institute of the Philippines, as well as technology and pharmaceutical companies. The firm’s patent team works closely with an independent intellectual property and technology company, Pinoy IP Works, which is a spin-off from the firm, comprising of scientists and engineers who are subject matter experts. Alongside Walter Go, Bayani B Loste leads the team.

Practice head(s):

Bayani B Loste ; Walter Go

Key clients

Department of Science and Technology

J.S. Unitrade Merchandise

Fiberline Industries

Technological Institute of the Philippines

Sunley Technology Corporation

Herbanext Laboratories

University of the Philippines Baguio

Pharmain Corporation

Work highlights

  • Filed, drafted and prosecuted more than 50 patent applications for the Department of Science and Technology in 2020.

Gorriceta Africa Cauton & Saavedra

Gorriceta Africa Cauton & Saavedra primarily advises clients on trademark registration and enforcement. The firm takes a proactive approach with clients by anticipating potential infringements suits, providing advice on the continued protection and monitoring of IP rights. The practice is lead by Lucas Niccolo Cauton and Ramon Andre Cedro .

Other key lawyers:

Blank

Key clients

Sunnies by Charlie

Regent Food Corporation

Xurpas

Doorbell Technologies

Glue Up (formerly EventBank)

Work highlights

  • Advised Doorbell Technologies on the registration of their proprietary marks.
  • Advised Charlie Inc on the submission for cancellation of the mark “MetroSunnies”.