The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.
Gold - Firms
Hailed as “one of the best legal establishments in the Philippines not only for IP matters but also in many other disciplines”, the reputed Cruz Marcelo & Tenefrancia is among some of the pre-eminent legal outfits to offer an equally outstanding IP practice. No newcomer to the gold tier, the trademark team has all bases covered for both local and international brand owners, from trademark search and prosecution to enforcement and courtroom litigation. Spearheading the group is litigator Susan Villanueva who has made regular appearances before the Supreme Court in a number of landmark IP cases. Fellow senior trademark practitioners working alongside her include Patricia Bunye and Divina Gracia Pedron. An IP licensing and franchising wizard, Bunye served as the president of the Licensing Executives Society International and has published numerous publications on IP licensing in the Philippines. Pedron specialises in brand protection, trademarks and copyright enforcement.
Cruz Marcelo & Tenefrancia is an exceptional firm in the Philippines providing the full spectrum of IP services. Our IP department advises both local and foreign clients throughout their IP journey, from the creation of intellectual property to its commercialisation and enforcement of rights.
For trademarks, we understand the importance of having a strong brand for any business, small or big, as it provides name recall and builds the goodwill of a company. Trademarks thus play an important part in a company’s IP portfolio.
We represent clients in the fields of media and entertainment, clothing and apparel, cosmetics, food and beverage, information technology, oil, telecommunications, electronics, pharmaceuticals, biotechnology, construction, manufacturing, retail, banking and financial institutions, and even educational and research institutions. We have also established relationships with foreign firms in different countries/regions, such as the United States, Europe, Japan, South America, China, India and members of the Association of South East Asian Nations, that have continuously entrusted us with the IP interests of our mutual clients in the Philippines.
Trademark searches
Companies spend resources and time creating and launching an effective brand. It is essential that such resources and time be not put to waste by adopting a sign that another entity is already using.
We conduct trademark searches to ensure that trademarks to be developed and used by the client are still available for use. We search the Philippine Intellectual Property Office (IPO) database for confusingly similar marks to a client’s proposed mark and provide an in-depth analysis and recommendation based on the search results.
Trademark prosecution
We protect our clients’ interests by obtaining the broadest protection for their marks, especially when there is an unnecessary limitation being imposed by trademark examiners, such as when there is a requirement to disclaim a word or element which we believe should not be disclaimed.
Trademark maintenance and monitoring
The life cycle of a mark does not end with obtaining a trademark registration. A trademark’s strength is developed through actual use and the extent of its exclusive use.
To this end, we remind our clients, free of charge, of the trademark maintenance requirements and file on their behalf declarations of actual use with the IPO. We also offer trademark watches to inform our clients in case any marks which we believe are confusingly similar to their marks are published, for purposes of opposition.
Trademark litigation
In cases of confusingly similar marks or unauthorised use of marks, we defend our clients’ marks against infringers through filing opposition, cancellation, infringement and/or unfair competition cases.
Trademark portfolio management and licensing
We have assisted clients in licensing their trademarks to ensure that they maintain the integrity of their marks by ensuring that the licence agreements provide for sufficient control over the nature and quality of the goods.
Given the above, our firm’s trademark practice is significant to local clients as they expand their businesses abroad, as they seek to protect homegrown brands in different countries, such as by filing international applications under the Madrid Protocol. We do not only assist our clients but consider ourselves as our clients’ partner in nation building as we help them grow their business and the Philippine economy through the use of intellectual property.
Jurisdiction