Bmarquez

Bienvenido A. Marquez III

Biography

Bienvenido Marquez III is a partner and head of Quisumbing Torres' Intellectual Property Practice Group. He also co-heads the Technology, Media & Telecommunications Industry Group. He participates in initiatives of Baker & McKenzie International of which Quisumbing Torres is a member firm. He is a member of Baker & McKenzie International's Asia Pacific Intellectual Property Steering Committee.

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

Practice Focus

Bien has 21 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, toys and the entertainment industry. He also advises on information technology, media and telecommunications matters, including data privacy and cybercrime law compliance.

Representative Legal Matters

  • Successfully represent a US pharmaceutical research and manufacturing company in opposing a petition for special compulsory license filed in the IP Office resulting in the submission of a Compromise Agreement.
  • Assist a Philippines-based electronics manufacturing company providing electronic materials, electronic components, and recording and data-storage media all over the world in obtaining letters patent for its method patent of soldering materials.
  • Assist a Philippines-based company providing cutting-edge audio hardware and software technology to brick-and-mortar retail stores within the Asia-Pacific region in obtaining Letters Patent for its audio player hardware and software for its exclusive manufacturing and distribution, both in the Philippines and in other jurisdictions.
  • Advise a US-based company that provides property and listing information to the commercial real estate industry in relation to an infringement case involving a business process outsourcing company in the Philippines.
  • Represent an American multinational technology company in an infringement case against a third party mark and brand that is confusingly similar to the client's mark and brand. Assist client to stop the unauthorized use of the infringing mark and successfully opposed an application for the registration of the infringing mark and brand.
  • Assist a media player, media library, Internet radio broadcaster, and mobile device management application developed by an American technology company on legal and regulatory matters, including its trademark applications and registrations.
  • Advise a leading US-based social networking service company on its potential liability for content posted by its users on its platform taking into account intellectual property, data privacy and cybercrime laws.
  • Assist a global online technology company that offers ride-sharing services through its app on data privacy compliance requirements in the Philippines.
  • Assist an American multinational manufacturer of a variety of products across numerous industries worldwide in causing the investigation and subsequent enforcement action / raid against a retail store and its storage facility in Manila selling counterfeit products bearing our client's marks and logos. The enforcement action / raid resulted in substantial seizure (tens of thousands of counterfeit products) and the discovery of the identity of the source / supplier.
  • Assist a multinational software corporation engaged in the provision of developing and marketing software and hardware services in investigation and subsequent enforcement action/raid against three retail establishments which are part of an extensive network of persons engaged in the unlicensed distribution and sale in the Philippines of high-end counterfeit software products of our client. The raid resulted in the discovery and seizure of 446 pieces of installers of unlicensed software and 5 computers loaded with unlicensed software, with estimated total market value of USD 111,220.

Professional Honors

  • Leading Individual in Intellectual Property, The Legal 500 Asia Pacific, 2014 - 2018
  • Leading Individual in TMT, The Legal 500 Asia Pacific, 2016-2018
  • Ranked Lawyer in Intellectual Property, Chambers Asia Pacific, 2014 - 2018
  • Leading Trademark Professional, World Trademark Review, 2016-2018
  • IP Star for Patents and Trademarks, Managing IP, 2016-2018
  • Top Patent Individual, Intellectual Property in the Philippines, IAM Patent 1000, 2016-2018
  • Recipient, Volunteer Service Awards –International Trademark Association (INTA), 2018

Professional Associations and Memberships

  • Integrated Bar of the Philippines
  • International Bar Association
  • International Trademark Association (INTA) - Chairman, East Asia & the Pacific Anti-Counterfeiting Sub-Committee (2016- 2017 Term)
  • International Trademark Association (INTA) - Member, Enforcement Committee (2018-2019 Term)
  • Licensing Executives Society (LES) Philippines - President-elect and 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
  • Intellectual Property Association of the Philippines
  • 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

Previous Offices

  • Bangkok