December 5, 2015
Federis & Associates Law Offices hosted this year’s INTA Roundtable in the Philippines. Aptly titled Behind the Brand: Insider Perspective on Brand Management and Protection, in-house lawyers from the leading companies in three industries participated in a lively discussion of the challenges they face in trademark enforcement in the Philippines, and overseas, as they all expand their markets outside the country. The session was moderated by Jan Ponce, a Partner at Federis, and was held on Thursday, November 26, 2015 at the Makati Shangri-La Hotel.
The discussion kicked off with the discussion by the lawyers of San Miguel Brewery Inc., United Laboratories and Banco de Oro (BDO). One common concern that was discussed at length was the challenge of complying with formality requirements when filing trademark applications in South America and in the Middle East.
Lawyers from BDO and San Miguel discussed their experiences in supervising litigation in foreign jurisdictions. In particular, San Miguel discussed a trademark infringement case that it successfully defended in the United States. Meanwhile, BDO discussed its own experience in handling simultaneous litigations in many jurisdictions to defend its right to use “BDO” as a trademark.
Meanwhile, the representative from United Laboratories discussed the reason why filing Madrid applications is not practical because his company’s business is centered around Southeast Asia, where most countries are not part of the Madrid system. All of the speakers mentioned that their respective companies do not use the Madrid System because most of their marks have already been filed and registered prior to the Philippines’ accession to the treaty. Moreover, the speakers also expressed concern about the cost-effectiveness of filing through the system.
There was also a lively exchange between the in-house lawyers and outside counsel about challenges in overcoming descriptiveness objections in trademark applications. San Miguel discussed the difficulty of filing trademarks abroad related to food products because they are often times rejected on the ground descriptiveness. United Laboratories discussed how his company opposes filers of trademarks, which combine part of a generic name, with other distinctive word in the area of pharmaceuticals.
A good number of trademark lawyers were present and commented on the different issues presented by the in-house lawyers
Finally, the session concluded with many outside counsel asking the in-house lawyers of their expectations from outside counsel. In-house lawyers would like for outside lawyers to be more direct in giving legal advice that would consider not only the legal but more so the business side of a problem; that they should provide a more accurate chances of success opinion. Also, the in-house layers expect outside lawyers to always have a sense of urgency when handling their cases.
The Roundtable provided a great opportunity for in-house and outside lawyers to have a direct discussion regarding the pressing issues affecting intellectual property matters in the Philippines.