Bmarquez

Bienvenido A. Marquez III

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. 
  • 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. 
  • 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 in Intellectual Property, The Legal 500 Asia Pacific, 2014-2020
  • Leading Individual in TMT, The Legal 500 Asia Pacific, 2016-2020
  • Leading Lawyer in Intellectual Property, Chambers Asia Pacific, 2014-2020
  • Distinguished practitioner for Intellectual Property and Technology and Telecommunications, Asialaw Leading Lawyers, 2020
  • Leading Trademark Professional, World Trademark Review 1000, 2014-2020
  • Asia IP Awards IP Expert, 2019-2020
  • IP Star for Patents and Trademarks, Managing IP, 2016-2019
  • Top Patent Individual, Intellectual Property in the Philippines, IAM Patent 1000, 2016-2019
  • 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

Previous Offices

  • Bangkok (2001)