Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

“ACCRALAW is one of the largest firms in the country but in IP, its litigation practice sets it apart,” says one practitioner. The firm’s expertise in IP mediation and arbitration is especially well regarded.

In its largest case this year, IP practice head Alex Ferdinand S Fider represented the US Polo Association against an individual in a trade mark infringement case regarding its logo. The case established a new precedent for competing marks. Rather than comparing the technical features of each mark, the court now considers the visual concept of the mark in determining whether it is infringing a trade mark.

“Carag Jamora Somera & Villareal is especially known for its strong IP practice,” notes one peer. Although name partner Carlo Carag left the firm in September 2010 because he was appointed to the position of finance undersecretary for the Revenue, Operations & Legal Affairs Group, the practice remains quite strong.

Partner Maria Trinidad Real is a noted practitioner of IP law, and has acted for a variety of companies that specialise in media and luxury goods. The firm’s clients include many prominent multinational brands such as the Motion Picture Association, Major League Baseball, Nintendo, Versace, Gucci and Donald Trump.

Quisumbing Torres is a Baker & McKenzie member firm whose IP practice specialises in trade mark registration and enforcement. It advises staple Baker & McKenzie multinational corporate clients such as Unilever and Proctor & Gamble, but also handles the account for L’Oreal and Starbucks in the Philippines. It is the only full service firm in the Philippines that has a dedicated department covering IP matters.

Head of practice André Philippe G Betita is recommended by peers for his lengthy experience in the IP area.

In the firm’s most notable activity this year, it participated in drafting the new Intellectual Property Code of the Philippines.

Premier Philippine firm SyCip Salazar Hernandez & Gatmaitan’s IP practice boasts one of the most impressive client lists in the country, comprising both domestic entities and multinational corporations that are household names. Clients include Pfizer, Colgate Palmolive, Abbot Laboratories, 3M, Merck, Sony, Revlon, Gap, Visa International and Max Mara Fashion Group.

Partner Enrique Manuel is acting for Gap, Accor, Marks & Spencer and Ramada, among others, regarding negotiation for franchises, licences and distributorship agreements for important brands making headway in the Philippines. Manuel is also acting for Chanel in scanning the local trade mark registry to ensure that marks similar to its trade mark have not been registered.

Castillo Laman Tan Pantaleon & San Jose is a mid sized firm with a full service offering.

Its IP practice, which handles both patent and trade mark related matters, is especially known for its pharmaceutical expertise, specialising in the area of patent infringement. Clients include such high profile multinational pharmaceutical brands as Eli Lilly, Boehringer Ingelheim and GlaxoSmithKline.

Name partner Noel Laman is highly recommended by clients and peers alike for his long experience in the field. He is a recognisable figure in the IP community, having served as President of the Intellectual Property Association of the Philippines. Junior partners Ray Anthony Pinoy and Peach Sison-Ledesma represented Eli Lilly in a patent infringement case regarding its Olanzapro medication, and are lawyers to watch in this space.

Although Poblador Bautista & Reyes is best known for its corporate and financing practices, its multitalented lawyers also possess expertise in IP law. Founding partner Gilbert T Reyes and senior partner Jaime G Hofileña are pivotal figures in regard to the firm’s IP practice.

Reyes and Hofileña, along with partners Brigitte Da Costa-Villaluz and Luis S Clemente, assist Intel regularly in regulating sole proprietorships, partnerships and corporations that are attempting to utilise Intel’s trade marks inappropriately.

The firm has also acted for several multinational corporations on patent infringement or counterfeiting in the Philippines. This includes work for pharmaceutical companies Abbot Laboratories and Sanofi Aventis, and fashion company Liz Claiborne and its subsidiaries LC Licensing and Juicy Couture.

RMBSA is one of the largest and oldest firms in the Philippines, and is well known for its abilities in IP prosecution. Partner and head of the practice Rogelio Nicandro is especially known for his exceptional skill in IP litigation.

The firm’s IP practice excels at both filing applications and monitoring registrations at the Intellectual Property Office. If violations occur, the firm also handles civil and criminal litigation aimed at alleged infringers.

The firm’s patent monitoring service, available upon request, is especially helpful for its many multinational clients, which include globally recognised brands such as Coca-Cola, Ford and Sony.

Villaraza Cruz Marcelo & Angangco, also known as CVC Law as of November 2010, possesses a commendable IP practice that is closely linked to its strong litigation area.

In a lengthy case that began in 2001, partner Susan D Villanueva is defending the trade mark of In-N-Out Burger in court, charging Benita’s Fries and Sehwani Company with unfair competition for using the restaurant’s mark. The suit has resulted in landmark precedents, such as the Philippine Supreme Court recognising the distinction of an “internationally well known mark”. The case, which Villanueva initially won, is now under appeal.

The firm’s other clients include Banco de Oro-Unibank, United Laboratories, Hormel Foods Corporate Services, Sunkist Growers, Japan Tobacco International and ABS-CBN Broadcasting.

Del Rosario & Del Rosario

Del Rosario & Del Rosario’s IP practice is developing, with international technology companies taking particular interest in the firm. Sony and Facebook are only a few household names that use this firm for its IP capabilities. Attorneys Arturo Del Rosario and Saben Loyola are especially involved in the IP area.

Hechanova Bugay & Vilchez

Led by managing partner Editha Hechanova, Hechanova Bugay & Vilchez’s IP practice is rapidly gaining a strong reputation for its expertise in handling raids and seizures of counterfeit goods. Hechanova has assisted Sanyo Electric, Luxottica Group, the owner of the Ray-Ban sunglasses brand, and Oakley in handling seizures of counterfeit goods from both warehouses and retail outlets in the Philippines. The goods seized during Oakley’s raid alone are estimated to be worth US$12.5 million.

Kapunan Garcia & Castillo Law Offices

Partner Margarita Benemerito-Castillo leads an active IP practice at Kapunan Garcia & Castillo Law Offices. In the last year, the firm has handled trade mark and patent filing and litigation for companies such as APB Asia, NV Sumatra Tobacco Trading, Phelps Dodge Philippines Energy Products, Le Café Figaro Enterprises and Apollo International.

Rouse

In a landmark case, Rouse obtained the ‘well known’ distinction for the BOTOX mark while representing pharmaceutical company Allergen in a trade mark dispute. The ruling, however, has been appealed. Other clients who have engaged the firm in the last year include BP Singapore, WWE, Wm Wrigley Jr and Research In Motion.