Firm overview
V&A Law’s IP Department is currently composed of nine (9) lawyers and four (4) paralegals. It is headed by Attys. Bienvenido “Bong” I. Somera, Jr. and Katrina V. Doble, who are both recognized as leading intellectual property practitioners in the Philippines.
V&A Law’s IP Department handles the full gamut of IP-related matters, including:
• Trademark and Patent Prosecution;
• Copyright Registration;
• IP Commercialization, Licensing and Franchising;
• Trademark Opposition and Cancellation Cases;
• Patent Invalidation Cases;
• IP Rights Enforcement Actions particularly for Infringement and Unfair Competition;
• Freedom to Operate Searches;
• Domain Name Registration and Audit;
• Border Control Measures;
• Regulatory Advice for Food, Drugs and Cosmetics; and
• Media, Entertainment and Broadcasting.
Advantages of V&A Law's Intellectual Property Department
• V&A Law has a highly regarded IP litigation practice, particularly for trademark and patent cancellation, as well as trademark infringement and unfair competition cases, evidenced by its success record for big-ticket litigations involving major players in the Philippines.
• V&A Law is also well-regarded for its IP prosecution work, which comprises sixty percent (60%) of its total IP practice. Around eighty percent of its IP prosecution practice is for trademark prosecution. While most of the work is “inbound”, V&A Law also represents some of the country’s leading companies, as well as several small and medium enterprises for their IP concerns, particularly for trademarks. This translates to a strong domestic IP prosecution practice and sufficient outbound work consisting of direct trademark filings and filings via the Madrid Protocol. V&A Law also handles domain name registrations and audits for the protection of trademarks in cyberspace. Despite high-volume filings, V&A Law’s IP Department is known and recognized for its speed, accuracy, and efficiency in IP prosecution, which stems from its highly systematic and team-based handling of accounts.
• The patent practice of V&A Law’s IP Department is handled by lawyers who have technical know-how and experience essential in prosecuting and defending patent applications, as well as litigating patent cases, covering diverse subject matters. Our patent lawyers have degrees in biology, molecular biology, biotechnology, chemistry, materials science and engineering, applied physics, and medicine, which give them the competence and capability to, among others, assist in the drafting and amending of patent specifications and claims, perform Freedom to Operate searches and analysis, and represent clients in patent cancellation/invalidation and infringement cases. Furthermore, included in the patent team are lawyers who previously worked as a patent examiner at the Philippine Intellectual Property Office (IPOPHL) and those who completed patent drafting and training courses provided by the International Federation of Intellectual Property Attorneys (FICPI) and the Japan Patent Office (JPO).
• V&A Law’s patent practice is not limited to drafting, filing and prosecution of patent applications. V&A Law is likewise active in patent litigation, handling several patent cancellation and infringement cases. V&A Law has a highly regarded patent litigation practice, as evidenced by its success record of securing favorable decisions in all cancellation cases filed in the last ten (10) years.
• V&A Law’s excellent reputation for IP is well recognized by both clients and contemporaries. It is consistently ranked as a top IP practitioner by World Trademark Review, Asian Legal Business, Legal 500 and Chambers & Partners
• V&A Law is also dedicated to the continued development of the IP practice in the Philippines. Its senior lawyers are well-respected resource speakers in their respective fields and have been tapped for various programs related to IP education such as the Mandatory Continuing Legal Education (MCLE) and the Unreal Campaign of the International Trademark Association (INTA).
• V&A Law also continues its membership in leading international IP associations, namely: International Association for the Protection of Intellectual Property (AIPPI), Licensing Executives Society (LES), International Trademark Association (INTA), Asian Patent Attorneys Association (APAA) and ASEAN Intellectual Property Association. The Firm is also a member of the ASEAN Plus Group, a network of leading firms in eight (8) ASEAN countries.
Areas of Recent Growth
• Patent Work in Relation to Weight Loss Drugs
With the recent interest in anti-diabetic and weight loss drugs, V&A Law has seen an uptick in clients interested in conducting freedom-to-operate searches for these drugs as well as seeking advice on possible cancellation of patents pertaining to these drugs
• Inter Partes Proceedings
V&A Law sees a continued increase in its litigation cases for trademarks and patents before the Intellectual Property Office of the Philippines (IPOPHL), many of which involve bad faith registrations of commercially valuable foreign brands and marks. The Firm also represents and/or defends several foreign clients in trademark opposition, trademark infringement, and unfair competition proceedings relating to confusingly similar marks.
• Pre- Enforcement Activities
Prior to initiating intellectual property violation cases, V&A Law assists its clients in conducting surveillance and monitoring activities against suspected infringers. In particular, V&A Law assisted Petron Corporation in surveilling the unfair practices of some traders of liquified petroleum gas (LPG) which undermine the goodwill and reputation of Petron’s “GASUL” brand. More recently, V&A Law issued a cease-and-desist letter on behalf of a famous sneaker brand against unauthorized sellers of counterfeit footwear and continues to monitor these entities through online and physical surveillance to assess compliance and determine further appropriate enforcement action.
• Online Protection of IP Rights
V&A Law assists IP rights holders in their efforts to protect and enforce their rights over the Internet, especially in relation to counterfeit products sold through third-party platforms. V&A Law handles the filing of and/or defending against infringement complaints lodged in such platforms, apart from performing online monitoring services for its clients.
• Domain Name Registration and Protection
V&A Law notes heightened interest in domain name-related matters, particularly from local clients. V&A Law currently handles the Philippines’ largest universal bank’s Trademark Clearing House (TMCH) registrations, as well as the maintenance of its domain-related marks under different top-level domains (TLD), which prove essential in the protection of the Bank’s marks online against infringement and cybersquatting and to effectively market the bank’s growing range of services. Related to this, V&A Law secured a favorable decision from the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center on behalf of the said Bank against a third party who registered in bad faith a domain name confusingly similar to the Bank’s mark.
• International Protection of Filipino Well-known Marks
V&A Law assists local clients to expand their trademark protection in other jurisdictions either through the Madrid Protocol or through direct filing. V&A Law represents Pan De Manila Food Co., Inc., a homegrown Filipino company well-known for its fresh, high-quality breads, in filing a Madrid application for “PAN DE MANILA” designating more than twenty (20) countries and coordinates with foreign correspondents to formulate prosecution strategies to meet the grounds for provisional refusal raised against some of these marks in their respective jurisdictions.
V&A Law also manages the domestic and international trademark portfolio of The Aristocrat Restaurant, one of the Philippines’ most iconic and enduring restaurant brands.
