The Legal 500

Fielding the largest number of lawyers and technical experts among IP practices in the country, HarneckerCarey, the IP arm of the powerhouse Carey firm, has the necessary resources to manage an impressive portfolio of patents and trade marks without outsourcing. The team draws upon the firm's strengths in other areas of the law, its 30 full-time litigators in particular, to combine its filing work with a fine IP litigation service. The team is notably strong on the innovations-side of the pharmaceutical industry, with five lawyers and nine technical professionals specialising in life sciences. It handles patents, trade marks and regulatory matters, winning praise from its mainly multinational clientele for its integral coverage of IP issues. Practice head Guillermo Carey, together with team director Fernando García and managing partner Jaime Carey, advised the 33 Chilean miners who were trapped in the San José mine for over two months in 2010 on the protection, licensing and sale of their IP rights in relation to their life experience. Guillermo Carey has been busy lately assisting Crystal Lagoons with the licensing, and patent and trade mark registrations, related to the almost global exportation of its technology. The team also successfully represented CEGELEC before the Supreme Court on a trade mark case.

Cariola Diez Perez-Cotapos y Cia's IP-specialised affiliate company, the ‘first class' Sargent & Krahn, is renowned for the sophistication and comprehensiveness of its service. Its 15 highly qualified and experienced lawyers are adept in all aspects of IP law, with particular expertise in handling pharmaceutical regulatory matters, including commercialisation of products and confidentiality regulations. Its internal litigation division is very active and covers the full range of issues, including piracy, trade secrets, unfair competition, domain names and advertising. On the trade mark side, leading figure Alfredo Montaner successfully acted for Soprole in the claim it filed at the council for self-regulating and ethical advertising against Danone over its attempt to register ‘Griego' as a trade mark. He also defended Compañía Licorera de Centroamérica in criminal proceedings all the way to the Supreme Court against an alcohol producer and distributor which had incurred a trade mark infringement. The highly recommended Juan Pablo Egaña represented Honda in court in relation to an infringement of the industrial design of its motorcycles and the illegal use of a number of its brands. Another highlight was advising the Chilean Pharmaceutical Industry Chamber on a challenge to the regulations on pharmaceutical products pricing enacted in 2010, resulting in their eventual repeal, the following year. María Luisa Valdés also wins plaudits.

Alessandri & Compañía Abogados' highly valued IP practice has considerable strength-in-depth and delivers market-leading advice on all IP matters to a mostly international clientele. Department head Rodrigo Velasco A. and Rodrigo Velasco S are both widely acclaimed and esteemed for their litigation abilities. On trade mark issues the team receives instructions from high-calibre clients such as Pfizer, L'Oréal, Mars, Warner Bros, PepsiCo and Lacoste; while its patent expertise attracts clients such as Babcock & Wilcox Power Generation as well as pharmaceutical and cosmetics companies Bayer, Lumene Oy and Ferrer Internacional. A highlight was advising Asociación Gremial Vinos de Chile, of which the firm is permanent counsel, on its filing of the country's first sustainability-certification mark registration at Chile's IP institute INAPI. It also acted for the association of Chile's exporters (ASOEX), and ProChile, the government's export promotion agency, with obtaining sectorial trade marks for Chile's fruit-industry; acted for the National Professional Football Association (ANFP), on the defence of its trade mark before CONAR; and advised L'Oréal, on a landmark case before the Supreme Court in relation to the copyright of its brand "PRO Keratina".

Felipe Claro leads Claro y Cia's ‘responsive, comprehensive and proactive' team; its ‘recommendations always steer clients in the best direction'. The group, which draws on the firm's international capabilities to handle multi-jurisdictional matters, receives both trade marks and patents mandates and covers the full range of IP activity, from prosecutions and oppositions to nullity filings and cancellation actions. Felipe Claro advised Apple on the destruction of hundreds of counterfeited products and the registration of its TV logo mark, which was subject to challenge by the trade mark office and third parties. He teamed up with José María Eyzaguirre B and Felipe Larraín to advise Latam Airlines on the protection of the LATAM Airlines mark and domain name, which was carried out in a single day in approximately 40 jurisdictions – hours before the public announcement confirming LAN and Tam's merger plans. He was joined by Cristóbal Eyzaguirre and José Miguel Huerta on an on-going trade mark cancellation claim filed by Philip Morris over infringement of its ‘rooftop' logo. Other highlights include acting for Starbucks Coffee in an opposition claim in connection with a trade mark registration and The Coca-Cola Company in connection with the planned launch of a new beverage called Coca-Cola in Bolivia.

At boutique firm Silva & Cia, founding partner Juan Pablo Silva leads a team entirely focused on the full spectrum of IP matters, contentious and non-contentious, and which is able to handle the most cutting-edge issues in this fast developing field. The firm is a member of an impressive number of international IP networks, which ensures its clients worldwide assistance with the protection of their IP rights. The team is particularly renowned for its expertise in trade marks, and has rebuilt a very active patent department after the departure of some of its key figures in 2010. It is also adept at criminal and counterfeit litigation, copyright matters, internet domain names and industrial secrets and design. Its list of clients includes a number of new technology companies, such as Facebook, that the team assisted with the protection of its trade mark in Chile. Patent-specialist Francisco Silva represented Chilean mining-services company Emin in a trade mark case against a competitor; as well as advising German personal-care product-manufacturer Solingen on a criminal investigation in relation to counterfeited goods. Rodrigo León acted for US television network HBO in a case against media streaming portal Cuevana concerning the infringement of copyrights resulting from the illegal distribution of TV shows. Other clients include media company Discovery Communications and O'Neill. Gonzalo Sánchez wins plaudits for his expertise in domain name conflicts.

Albagli, Zaliasnik & Cia boosted its IP profile in 2011 with the promotion of Ariela Agosin to the partnership as head of the firm's intellectual property team. The firm has a broad IP practice and is singled out for its particular expertise in advertising law – it is the only Chilean member of the Global Advertising Lawyers Alliance. The firm's notable strength in litigation is an indubitable asset to the team, which is often seen representing its clients' interests in court. It successfully acted for Wal-Mart Stores before the Supreme Court in relation to a trade mark registration; represented H-D Michigan in a criminal action against counterfeiters of Harley Davidson products; advised Iron Maiden in a trade mark cancellation action; and acted for Hites in a claim over use-of-image in advertising. It also advises companies from the pharmaceutical industry.

Able to drawing on the strength of a worldwide network of correspondents and technical advisors, boutique firm Johansson & Langlois is highly rated for its capability to handle cutting-edge industrial and intellectual property matters; it advises a distinguished client roster. The group is particularly noted for its patent expertise and maintains an experienced team of in-house engineers and technicians who are able to give comprehensive advice on patents, industrial designs, integrated circuit topography and the registration of new plant varieties. The firm's managing partner, patent specialist Felipe Langlois, was director of the Chilean Intellectual Property Association for around ten years; he is thoroughly recommended, as are Andrés Echeverría, an arbiter at the Chilean Network Information centre; and Max Montero, who is very well-regarded for his trade mark, litigation and infringement practice.

Dedicated IP boutique Porzio Rios & Associados amicably unwound its merger with leading full-service firm Prieto y Cia during the second half of 2011 but will continue to handle complex IP referrals on its former partner-firm's behalf. Led by the highly regarded Mariano Porzio, the team offers comprehensive advice and ‘highly personalised service' to national and international clients on the full range of IP matters: trade marks, patents, domain names, copyright and designs. The team is particularly well versed in technology-related matters. Rafael Covarrubias and Cristóbal Porzio are also recommended.

One of the oldest firms in the country, IP has been a core practice at Puga, Ortiz & Cia, Abogados for generations. Juan Enrique Puga leads a team incorporating three partners (and eight associates). It advises extensively in the pharmaceutical sector (Laboratorios Davis, Aventis Pasteur and Tecnofarma), but has clients in sectors from finance to foodstuffs, as well as the Chilean Chamber of Commerce. It also acts for clients abroad, such as Empresas Davis, which is assists both in Chile and in other Latin American countries. The team undertakes the full range of patents, trade marks, copyright, domain names, and unfair competition, as well as contracts, licensing, technology transfer and franchising; and is particularly well reputed for its litigious capability. Puga assisted the Peruvian government with the first registration of a geographical indication for a foreign country in Chile. He also acted for Terra Networks Chile in a claim brought by a journalist over the infringement of her copyrights in relation to documentary films on Augusto Pinochet. Cristián Saieh and Cristián Mir are also recommended.

Highly regarded as one of the most capable firms in the IP sector, medium-sized boutique Estudio Villaseca is a leader in the biotechnology and sanitary sector and impresses on account of its vast experience in patent prosecution, particularly plant varieties. Managing partner Sergio Amenábar leads a strong team, and all five partners are renowned for their exceptional consistency: patent specialist Eduardo Molina; head of the domestic trade mark group Bernardo Serrano; internet domain-name expert and president of the Chilean Intellectual Property Association Max Villaseca; and enforcement practitioner Felipe Pavez. Representative highlights included advising Motion Pictures Licensing Corporation on a copyright infringement issue against a bus company; representing Colgate-Palmolive before the Chilean National Health Institute in a case over the illegal importation, distribution and commercialisation of its products; and assisting Cinemark with obtaining its domain name. Other clients include Microsoft on patent matters and Adobe, Philips and F Hoffmann-La Roche on trade mark registrations.