Bienvenido Marquez

Bienvenido A. Marquez III

Partner
Quisumbing Torres
Manila

Biography

Bienvenido Marquez III is a partner and head of Quisumbing Torres' Intellectual Property, Data and Technology Practice Group. He also co-heads the Consumer Goods & Retail Industry Group and is a member of the Technology, Media & Telecommunications Group. He participates in initiatives of Baker & McKenzie International of which Quisumbing Torres is a member firm. He is a member of Baker McKenzie's Asia Pacific Intellectual Property Steering Committee and heads the Asia Pacific Intellectual Property Business Unit for Brand Enforcement. He currently serves as the President of the Philippine Chapter of the Licensing Executives Society International. He is also a member of the Anti-Counterfeiting Committee of the International Trademarks Association (INTA).

He has vast experience in handling IP enforcement litigation, trademark and patent prosecution and maintenance, copyright, data privacy, information security, IT, telecommunications, e-commerce, electronic transactions, cyber security and cybercrime. Bien is a Legal 500 Leading Lawyer in Intellectual Property and TMT and a Chambers Asia Pacific Band 1 Professional in Intellectual Property. He is also recognized as a World Trademark Review 1000 Leading Trademark Professional and an IAM Patent 1000 Top Patent Individual. He was recognized as a Volunteer Service Awardee by INTA in 2018.

Practice Focus

Bien has 23 years of experience focusing on trademark and patent portfolio management and in the enforcement and litigation of IP rights before courts and administrative agencies. He manages the anti-piracy / anti-counterfeiting program for major clients covering a wide range of industries and products: pharmaceuticals, food, alcoholic and non-alcoholic beverages, telecommunications, apparel, footwear, cable and satellite television, computer software, hardware and peripherals, household and consumer products, construction, aesthetics, toys and the entertainment industry. He also advises on information technology, media and telecommunications matters, including data privacy, cyber security and cybercrime law compliance.

Representative Legal Matters

  • Successfully obtained for a global manufacturer of construction and heavy equipment and vehicles favorable rulings in courts of first instance in an Unfair Competition and Trademark Cancellation civil case and in an Unfair Competition criminal case against a respondent that fraudulently obtained a trademark registration in the Philippines for an exact duplicate of client's brand name and logo and engaged in the widespread manufacture and sale of footwear and garments using client's brand name and logo.
  • Successfully oppose for a European multinational automotive company the third party application for a mark that is confusingly similar to client's trademark. Obtained confirmation from the Philippine Intellectual Property Office of client's exclusive rights over a word that forms part of client's trademark for class 12 goods in the Philippines.
  • Successfully oppose for an American car manufacturer the third-party application of a mark, for which client had not yet obtained a class 9 registration in the Philippines. Successfully convinced the local trademark regulator that the applicant is guilty of bad faith in attempting to register its mark for class 9 goods in the Philippines, as client had previously used and registered the mark for class 9 goods in other jurisdictions.
  • Successfully defend a leading global pharmaceutical company in a patent cancellation action involving a local generics company that had been commercially distributing products that infringed on client's patent. Successfully secured a favorable ruling from the Intellectual Property Office which will boost client's position in other patent matters around the region against similar generics manufacturers involving the same patent.
  • Represent an American multinational technology company before the Bureau of Legal Affairs (BLA) of the IPO in the opposition case against the registration of the mark that is confusingly similar to client’s registered mark. Successfully convinced BLA to sustain the opposition and refuse the registration of the third-party mark.
  • Represent an American fashion retailer before the BLA of the IPO in the opposition case against the registration of a mark that client uses in other jurisdictions. Successfully convinced BLA to sustain the opposition, despite the absence of any local registration, and refuse the registration of the third-party mark.
  • Represent a multinational Japanese company before the BLA of the IPO in the opposition case against the registration of a mark that is confusingly similar to client’s well-known and registered mark. Successfully convinced the BLA to sustain the opposition and refuse the registration of the third-party mark.
  • Successfully coordinated for an international designer, manufacturer and distributor of fashion, luxury, sport, and performance eyewear products in the raids against 10 establishments owned by six related entities engaged in the large-scale and widespread sale and distribution in the Philippines of counterfeit eyewear products bearing client’s trademarks and designs. The raids resulted in the seizure of 323,141 pairs of counterfeit eyewear products with an estimated market value of over USD 31 million.
  • Assist a public Asian car parts company in its global anti-counterfeiting program. Successfully coordinated the raids against three establishments in Manila selling counterfeit car spare parts.
  • Act for one of the largest technology and industrial engineering companies in the world against the local subsidiary of a China-based moulding and plastic injection company (Target) engaged in the widespread use of unlicensed and/or counterfeit versions of software products of client. Supported with the appropriate search warrants, successfully conducted a raid on target's premises resulting in the discovery and seizure of 23 computer sets with 47 unauthorized installations of client’s software. The seizure led to the filing of criminal complaints against the owners and key officers of the target.
  • Assist a public Asian car parts company in the successful settlement of the civil aspect of the criminal cases for infringement filed in two cities and obtained for client payment of damages and a public apology.
  • Conduct for the local franchisee of an American casual dining restaurant and coffee retailer and wholesaler due diligence of client's potential acquisition of shares of stocks of a company operating a famous fast food chain in several countries including the Philippines (Target). Conduct proprietor and availability searches to identify and confirm ownership of trademarks and patents used by Target in the Philippines. Review all existing licensing/franchising agreements of Target to confirm that these are enforceable under Philippine laws.

Professional Honors

Leading Individual for Intellectual Property, The Legal 500 Asia Pacific, 2014 to 2021

Leading Individual for TMT, The Legal 500 Asia Pacific, 2016 to 2021

Band 1, Leading Lawyer for Intellectual Property, Chambers Asia Pacific, 2020 to 2021

Band 2, Leading Lawyer for Intellectual Property, Chambers Asia Pacific, 2014 to 2019

Distinguished Practitioner for Intellectual Property, asialaw Leading Lawyers, 2020 to 2021

IP Expert, Asia IP, 2019 to 2020

Patent Star, ManagingIP IP Stars, 2016 to 2020

Trademark Star, ManagingIP IP Star, 2016 to 2020

Patent Leader, World Intellectual Property Review Leaders, 2016 to 2020

Trademark Leader, World Intellectual Property Review Leaders, 2016 to 2020

Technology Leader, World Intellectual Property Review Leaders, 2019 to 2020

Gold, Leading Individual for Enforcement and Litigation, World Trademark Review 1000, 2020

Gold, Leading Individual for Prosecution and Strategy, World Trademark Review 1000, 2020

Gold, Leading Individual, World Trademark Review 1000, 2017 to 2019

Recommended Individual, IAM Patent 1000, 2016 to 2020

Recipient, Volunteer Service Award for the Advancement of the Association, International Trademark Association (INTA), 2018

Professional Associations and Memberships

International Trademark Association (INTA) – Lead, Online Piracy Project Team of the Anti-Counterfeiting Committee

Integrated Bar of the Philippines

International Bar Association

International Trademark Association (INTA) - Chairman, East Asia & the Pacific Anti-Counterfeiting Sub-Committee (2016-2017 Term); Enforcement Committee (2018-2019)

International Trademark Association (INTA) - Member, Enforcement Committee (2018-2019 Term)

Licensing Executives Society (LES) Philippines - President (2019 - 2021); Co-Chair, Electronics, IT and Telecommunications (EITT)

Intellectual Property Coalition - Auditor, Board of Trustees and Executive Committee Member

Intellectual Property Professors and Researchers Organization of the Philippines - Member of the Board (IP Pro)

Intellectual Property Association of the Philippines (IPAP)

Asian Patent Attorneys Association (APAA)

Admissions

Philippines (1997)

Education

Ateneo de Manila University (JD) (1996)

Ateneo de Manila University (BS Legal Management) (1990)

Languages

English

Filipino