Firms To Watch: Intellectual property

Boutique law firm Beytia Badilla Davis is sought out for its experience in trade marks, patents, copyright, software and IP-related contracts, along with litigation at both national and international levels.
Led by IP directors Nicole Alfero Marti  and Francisca Figueroa Illanes   (both founding partners at Alfero & Figueroa Abogadas until early 2021), Russi & Eguiguren | Quadrant‘s IP practice advises on trade marks, domain names, plant varieties, patents, utility models and industrial designs (among other matters).

Intellectual property in Chile

Carey

The sizeable intellectual property (IP) group at full-service firm Carey consistently provides IP-related commercial and litigation advice to companies from the infrastructure, energy, mining, transportation, technology, life sciences and healthcare sectors. Its experience covers the prosecution and litigation of trade marks, patents and industrial designs, geographical indications, designations of origin, plant varieties, and domain names; and the department’s expertise further extends to copyright, anti-counterfeiting, technology contracting, licensing and IP management. The practice is jointly led by IP expert Guillermo Carey, whose track record includes IP litigation, trade marks, patents, and licensing, distribution and franchise agreements; Francisco Carey, who focuses on trade mark and patent procedures and prosecution, along with anti-counterfeiting and IP-related agreements; and counsel Fernando García, an expert on invention patents. At associate level, the deeply experienced Catalina Aldunate is an intellectual and industrial property specialist, while Carla Encalada‘s practice includes IP litigation, trade marks, patents and domain names.

Key clients

Nestlé

IMDEX

Crystal Lagoons

The Weir Group

Pontificia Universidad Católica

Mercado Libre

The Not Company

Novartis

Televisa

Adidas

HP

S&W Ingeniería Agrícola y Propiedad Intelectual

Work highlights

  • Assisted Nestlé with the filing and prosecuting of over 50 new patent and industrial design applications.
  • Assisted Crystal Lagoons with filing and prosecuting four new patents in over 37 countries around the world.
  • Assisted Socofar with performing several regional search reports, in relation to the expansion of the client’s trade marks (both in Chile and foreign countries).

Sargent & Krahn

The sizeable, ‘first-level, multidisciplinary team‘ at Sargent & Krahn is consistently sought out for its experience in managing large trade mark and patent portfolios, including handling both prosecution and contentious issues. Among the firm’s numerous highly expert advisers, Alfredo Montaner leads the trade mark and domain name practices; patent department head Juan Pablo Egaña focuses on enforcement and contractual matters involving patents (as well as the interaction between patents and pharmaceutical and agrochemical regulatory matters); and Rodrigo Lavados is copyright team leader. The second line of experienced partners includes Eduardo Lobos (who has the ‘ability to deliver realistic and effective strategies‘), and recently promoted trade mark, patent and life sciences specialist Cristian Barros M. Among the firm’s associates, senior Pablo Cariola is IP-infringement head, and Daniela Guerrero also focuses on intellectual and industrial property matters. Felipe Fernández moved to Ernst & Young (Santiago) in November 2021.

Practice head(s):

Alfredo Montaner; Juan Pablo Egaña; Rodrigo Lavados; Eduardo Lobos; Cristián Barros

Testimonials

The strength of the team is having maintained its excellent professional quality for over 50 years – great early incorporation of technology in managing the search and defence of trade marks.

First-level, multidisciplinary team in relation to industrial and intellectual property, as well as data protection and consumer matters.

A highly prepared team, that has high levels of knowledge of the regulations and their application, as well of the cases it handles – it also knows the history and profile of our company very well.

Response times that are much faster than those of the competition, and the team’s goodwill and willingness are also plus points.

Stand outs because of tremendous lawyer Juan Pablo Egaña, who not only has all the knowledge, but also the best approach, working side by side with clients to build the strategies that allow them to be successful.

Juan Pablo Egaña delivers excellent results.

Eduardo Lobos has impressive international and teaching experience.

Eduardo Lobos is a great asset for our company, due to his experience, availability and ability to deliver realistic and effective strategies in industrial property matters.

Key clients

Google

Johnson & Johnson

Viña Concha y Toro

Samsung

Sanofi-Aventis

Philip Morris

Red Bull

Equifax

BMW

Dow Agrochemicals

Astrazeneca

Lundbeck

Syngenta

Merck

Moderna

Pontificia Universidad Católica

Virutex Ilko

Viña MontGras

Work highlights

  • Assisted Genentech with its prosecution of a pharmaceutical composition application, including an appeal before the Industrial Property Court.
  • Assisted Incyte Corporation with prosecuting a pharmaceutical composition and kit application, including before the Industrial Property Court.
  • Successfully represented Federación Nacional de Cafeteros de Colombia in an opposition against the establishment of “EL TINTO CAFÉ COLOMBIANO LYC” as a trade mark.

Silva

The 10-strong team at IP firm Silva acts for both domestic and foreign companies on trade marks, patents, litigation, data privacy, domain names, copyright, geographical indications and designations of origin. Clients also benefit from the group’s enviable enforcement and litigation credentials. The practice is jointly led by founding and managing partner Juan Pablo Silva, who has longstanding experience in protecting the IP rights of multinational companies (particularly in the financial services, retail, telecoms, media and sports industries); Francisco Silva, who routinely acts in substantial international trade mark and patents cases; and trade mark, domain name and copyright expert Ricardo Montero. Also integral to the department are Andrés Grunewaldt, who specialises in litigation, and geographical indications and designations of origin; Rodrigo León, an expert in copyright and patent matters; and patent department director Sebastián Alvarado, a partner as of March 2022.

Practice head(s):

Juan Pablo Silva; Francisco Silva; Ricardo Montero

Key clients

WhatsApp

Turner Broadcasting System

20th Century Fox Film Corporation

Starbucks Corporation

ME Elecmetal

Valent Biosciences

OfficeMax

Enaex

CopperProtekt

Antofagasta Minerals

Work highlights

  • Assisted Triumph International (as opponent) in relation to the reproduction of the trade mark and name of a famous person (who died less than 50 years ago).
  • Assisted Paskà with an application for the “INTENSO AROMA DI CAFFE” trade mark.
  • Assisted 20th Century Fox Film Corporation with trade mark registrations.

Albagli Zaliasnik

Providing ‘a very good service that is characterised by availability and efficiency', Albagli Zaliasnik's seven-member IP practice is best known for its expertise in anti-counterfeiting, complex IP litigation, patent and trade mark prosecution, and advertising law. It also fields specialists in IP-related consumer law, and competition and antitrust matters. IP group director and ‘excellent lawyerEugenio Gormáz (a partner since 2020) routinely manages large trade mark portfolios in Chile and abroad, while litigation group leader Ariela Agosin is also active in IP matters. At associate level, senior Juan Pablo Zamora and Antonia Nudman both focus on IP-related litigation and contracts work. IT, privacy and media practice director Oscar Molina  and former associate Andrea Céspedes departed the firm in mid-2021 for BHP and Bitlaw, respectively.

Practice head(s):

Eugenio Gormáz

Testimonials

Responses that are always fast, efficient and assertive.

Its answers are fast and well supported, and they emit clear and complete concepts – the attention is first class!

Great for its preparation, service and speed.

Provides a very good service that is characterised by availability and efficiency.

Swift responses and flexibility.

Very good and handles its clients very well. Relatively young lawyers who know a lot about law and the areas they work in, and they have good contacts and handle new technologies well.

Eugenio Gormáz is an excellent lawyer as well as being a very present partner.

I work with Eugenio Gormáz and senior associate Juan Pablo Zamora, who are always attentive to our requirements and with good results.

Key clients

Mapuche Economic Confederation

Huawei

Toc

Moonbug Entertainment

Whole Foods

Cotalker

Atanor

Respect

Psiquera Tulahuen

Twitch Interactive

Work highlights

  • Assisted Mapuche Economic Confederation with registering the “SELLO MAPUCHE” certification mark.
  • Assisted Whole Foods with filing strategic trade mark applications to ensure that its name is sufficiently protected from third parties in Chile.
  • Assisted Twitch Interactive with filing strategic trade mark applications to ensure that its name is sufficiently protected from third parties in Chile.

Alessandri & Compañía Abogados

The 13-member IP department at Alessandri & Compañía Abogados consistently works along the firm’s tax, labour, corporate, contract and litigation teams, in relation to the protection and enforcement of IP assets. The principal figures are managing partner of the firm’s technology and IP departments, Rodrigo Velasco A, who specialises in matters involving domain names, trade marks, patents, data protection, software and internet issues (particularly in relation to licenses, contracts, tax aspects and litigation); and Santiago Ortúzar, an expert in the management of national and multinational patent portfolios, and related corporate matters such as complex licensing and M&A transactions involving patent assets. Practice area director Carla Pacheco also has longstanding IP experience, including portfolio management, advertising, unfair competition and litigation work.

Practice head(s):

Rodrigo Velasco A; Santiago Ortúzar

Key clients

Indura

L’Oréal

Tresmontes Lucchetti

Compañía de Petróleos de Chile (Copec)

Grifols Worldwide Operations

Beer Garage

Agroindustrial y Comercial Superfruit

Babar Lets Go Dip

Inmobiliaria Nueva Costanera

Nanotec

Jugos Rústicos

Work highlights

  • Assisted Indura with its objection to a patent application, alleging lack of inventive level.
  • Assisted Beer Garage with registering the sign “CASA DE LA CERVEZA”.
  • Assisted Inmobiliaria Nueva Costanera with its application to register the sign “CASA VITACURA”.

Claro & Cia.

Claro & Cia.’s full-service IP practice has longstanding experience in brands and patents, but it also acts on major IP matters involving advertising, software, data protection, unfair competition and consumer law. The team additionally assists with IP-related regulatory issues and transactions; and has sector expertise in agriculture, clothing and footwear, cosmetics, food and beverage, mining, pharmaceuticals, technology and tobacco. Department head Felipe Claro has extensive experience in advising on complex and novel IP matters, while privacy and IP specialist Paulina Bardón is a new partner as of January 2022. At associate level, senior Claus Krebs advises on both trade mark and patent work; Mahish Sadarangani assists with trade mark, copyright and internet issues; Trinidad Rojas manages the firm’s patent practice; and Bryan Kernitsky has a broad IP practice.

Practice head(s):

Felipe Claro

Testimonials

Very client-oriented team – every team member that I’ve been in contact with is kind and courteous. The lawyers speak in terms that any person can understand and they don’t get too technical with difficult legal terms.

Friendly, kind and courteous individuals, who do follow-ups, answer rapidly, and are always available to attend their clients.

In addition to the legal expertise, I would highlight the human qualities and support for small clients.

Very human approach, with the team characterised by personalised, effective and speedy attention.

Great IP knowledge.

Felipe Claro is an extremely complete lawyer. Not only does he lead the IP practice, but he also actively participates in international organisations, such as his Presidency of the AIPPI.

Felipe Claro has great leadership skills and is a lawyer who is highly respected by his colleagues.

Key clients

Apple

Biomar Group

Biomar Chile

Compañía ElectroMetalúrgica

Cristalerías de Chile

Joy Global

Sinovac Life Sciences

Sociedad Anónima Viña Santa Rita

The Coca-Cola Company

Viña Garcés

Agrícola Huertos Santa Teresa

Zoom Video Communications

Work highlights

  • Currently representing Viña Garcés and Agrícola Huertos Santa Teresa in the cancellation of S&W Ingenieria Agrícola’s patent, which protects a system for controlling plant dormancy.
  • Assisted Sinovac Life Sciences Co with filing and prosecuting two “CORONAVAC” applications that required an expedite prosecution in the middle of the Pandemic.
  • Assisting (pro bono) Liga Chilena Contra La Epilepsia with its general IP assessment and filing strategy, as it has never registered its name or acronym as trade marks.

Baker McKenzie Chile

Baker McKenzie Chile's specialised team acts across the full spectrum of IP matters, including trade marks, copyright, domain names and patent law; its expertise covers prosecution, enforcement, litigation, regulatory and transactional work. The group can additionally leverage the firm’s enviable regional and global IP network, which covers over 47 jurisdictions. Department head Valentina Venturelli (a former Sargent & Krahn associate) is active in trade mark and patent prosecution, particularly pharmaceuticals and healthcare-related matters. Within the associate pool, senior Sebastián Dorena focuses predominantly on anti-counterfeiting matters, IP litigation and enforcement, while junior lawyer Carlos Lazcano also assists with the firm’s IP work.

Practice head(s):

Valentina Venturelli

Key clients

Shell Brands International

Australian Wool Innovation

BAT

Ferrere Internacional

SAP

Shimano

Deutsche Pharma

Techtronic Cordless GP

Ferring Pharmaceuticals

Nissan Kabushiki Kaisha

Work highlights

  • Assisted Domex Superfresh Growers with filing two trade mark applications for “SUPERFRESH GROWERS”.
  • Assisted Abbott Laboratories with its cancellation action filed against registration of the mark “HM-O” by Nestlé.
  • Assisted Shire Human Genetic Therapies and Ethris with the filing and prosecution of a patent application.

Covarrubias

The 10-strong practice at specialised IP firm Covarrubias fields experts in patents, national and international trade marks and internet domains, as well as litigation; and can also call on the expertise of an in-house technical team comprising biologists, chemists, engineers and designers. Founding partner Arturo Covarrubias is a specialist in industrial property litigation involving the pharmaceuticals, biotechnology, tissue paper, food, retail, and telecoms sectors; and international trade mark department head Sofía Covarrubias is a recently promoted partner. Within the associate pool, biochemist Matías Valenzuela is patent department head; former Bock Abogados lawyer and 2021 recruit Diego Bilbao leads the firm’s litigation practice; and Victor Ahumada recently joined as national trade marks head (the role previously occupied by associate Juan José Prieto, who moved to Morales & Besa).

Practice head(s):

Arturo Covarrubias; Sofía Covarrubias; Matías Valenzuela; Diego Bilbao; Víctor Ahumada

Testimonials

The firm stands out for immediately acknowledging receipt of a request and sending all the required information within an expedited period of time. The depth of analysis of their reports is extraordinary, which has allowed us to provide a high-quality service to our clients for their matters in Chile.

The rates the lawyers offer are much more advantageous than other firms in Chile, and do not affect the quality of the work they do or their response times. They have efficient staff in all their areas, which allows even the billing process to be quick and easy.

The firm’s lawyers and engineers are very good, practical and fast.

Special mention goes to Arturo and Sofía Covarrubias, who are very open and versatile. They are always available to you as a client and ready to provide a fast and efficient service. Their knowledge of IP issues is vast and, supported by an efficient work team, they offer us practical solutions for our clients in Chile.

Key clients

BRF Singapore Foods

Samsung Electronics

Quality Is Our Recipe

AB Electrolux

Hertz System

Freixenet

Hyundai Motor Company

WaterRower (UK)

Shopify Inc

Confederación Sudamericana de Fútbol

Kia Corporation

Shinano

AMVAC Chemical Corporation

Work highlights

  • Advised Samsung Electronics on the application and registration of the trade mark “Samsung Family Hub”.
  • Represented Shopify in domain name litigation against the owner of shopyfi.cl, a quasi-identical domain to the “SHOPIFY” trade mark.
  • Assisted Exelixis with negotiating the transfer of rights to an invention patent.

Dellafiori Abogados

The broad expertise at boutique IP practice Dellafiori Abogados (‘an extremely important firm in Chile') ranges from industrial designs, utility models, copyright and trade secrets, to internet and contractual issues; its IP experience inculdes primarily the food, wine, agriculture and technology sectors. The group is co-led by founding partner Enrique Dellafiori, a specialist in IP advisory and litigation work; and trade mark and patent law expert Mauro Dellafiori, who is ‘always available'. Also integral to the practice are Franco Dellafiori, who handles the firm’s overseas trade mark clients, while associate Cristián Carril heads the domain names department.

Practice head(s):

Enrique Dellafiori; Mauro Dellafiori

Testimonials

The team is very good, young and dynamic – it is always a pleasure to work with these lawyers because of the facilities they provide.

Gives us comprehensive support in everything concerning IP – very close relationships, a lot of initiative, and keeps us up to date with regard to our trade marks and licenses, in addition to advising us on acquisitions in a very reliable way.

The plus of Dellafiori Abogados is the service provided, being aware of what is happening in the market, advising us on new events, and generating initiatives that go beyond its legal scope.

We consider Dellafiori Abogados to be a leading firm in the Chilean market, and it manages several of the best and largest companies in Chile that have presences throughout the Continent.

Dellafiori became our Chilean reference firm, because of its access to information, experience and speed of service. It should be considered as an extremely important firm in Chile.

Franco and Mauro Dellafiori are excellent professionals who have great knowledge of the market, and always provide adequate solutions for any type of case.

The experience, service and attention of Mauro Dellafiori and Franco Dellafiori are unique.

Mauro Dellafiori is always available to advise us, resolve doubts and provide efficient solutions.

Key clients

Empresas Carozzi

Eurofarma Chile

Laboratorio Maver

Cooperativa Agricola y Lechera de la Union

Institución Financiera Cooperativa Coopeuch

Prosegur Compañía de Seguridad

Sociedad Punta de Lobos

Enel

Zhejiang Geely Holding Group

ENKO

Work highlights

  • Assisted Sociedad Punta de Lobos with the assignment and change of names of its trade marks “LOBOS”, “SAL LOBOS” and “BIOSAL” (among others.)
  • Assisted Cooperativa Agricola y Lechera de la Union with its opposition to a milk company’s trade mark.
  • Advised Laboratorio Maver on the acquisition of the trade marks Cotibin, Predual, Povin and Pancrit from Andrómaco Research.

Jarry IP

Celebrating a decade in the market in 2023, specialised IP boutique Jarry IP routinely advises universities, entrepreneurs and corporations on patents and trade marks involving the technology, cosmetics, food and pharmaceutical sectors (among others). The principal practitioners are founding partner Allan Jarry, who has longstanding experience in IP matters; Olga Moreno, who leads the patent department, from where Paula Mardones handles the firm’s patent cases outside Chile; and Magdalena Barros (trade marks, domain names, copyright, patents and personal data), who is ‘a good lawyer with strong communication skills‘. Among the associates, senior Javiera Diaz is an IP and corporate law expert, and junior Arantzazu Bermudez specialises in IP litigation.

Practice head(s):

Allan Jarry; Olga Moreno; Magdalena Barros

Testimonials

Personalised treatment that is correct, clear, and with solid knowledge of the subjects.

Quick and efficient responses – the real deal! The lawyers are very agile and respectful, in addition to knowing their areas.

A very nice team and staff.

Strong IP knowledge with good and complete communications.

Attentive to clients at both personal and professional levels – excellent responses, good processes and high quality follow-up on cases.

Warm treatment of clients.

Allan Jarry is very approachable and a friendly person.

Magdalena Barros is a good lawyer with strong communication skills.

Key clients

Toyota Motor Corporation

CHEP Technology

Etex Group

Innersloth

Total Energies

Colgate-Palmolive

Farmacy Beauty

San Antonio Winery

Del Monte Foods

Fast Retailing

Work highlights

  • Assisted TotalEnergies with trade mark filings and prosecution matters.
  • Assisted Farmacy Beauty with the filing and prosecution of “FARMACY” trade marks.
  • Assisted Sanpro with the registration of a trade mark.

Johansson & Langlois

With substantial expertise in intellectual and industrial property work, Johansson & Langlois advises on patents, trade marks, utility models and industrial designs. The firm also houses specialists in copyright, domain names, geographical indications, appellations of origin and technology transfers, with the team leveraging its access to in-house engineers who assist with the prosecution and obtaining of patents. Andrés Echeverría is a trademark and patent expert; Max Montero is the current director of the Intellectual Property Chilean Association (ACHIPI); Christopher Doxrud's broad practice covers trade mark and patent litigation, infringements, copyright and domain names; and managing partner Felipe Langlois is an experienced patent specialist.

Magliona Abogados

Well known for its technology expertise, Magliona Abogados' eight-member IP practice is active in patent and trade mark litigation, software licensing and IP transactional matters. Other specialisms include negotiations involving performance right organisations; IP public policy and government relations; copyright clearance for advertisement companies; and IP enforcement campaigns. The team is jointly led by name partner Claudio Magliona, who assists with copyright, trade marks and IP transactions; Nicolás Yuraszeck, an expert in software and information and communications technology-related IP matters; and director Carlos Araya, who assists with copyright issues, patent litigation and IP deals. The broad practice of associate Karla Cid also includes IP work. Former associate Ramon Rojas  left the firm in late 2021.

Practice head(s):

Claudio Magliona; Nicolás Yuraszeck; Carlos Araya

Testimonials

The team understands clients’ needs and concerns.

The lawyers of this office stand out for their extensive knowledge of the matters they work on, mainly IP and technology.

Very professional, always reachable, and with quick responses.’

Excellent team, with solid knowledge of IP and advice with a business vision.

Great market knowledge, IP expertise and everything related to it. There are no firms today that have the quality of senior lawyers in a team that provides personalised services of such high quality.

Partners Claudio Magliona and Nicolás Yuraszeck, along with director Carlos Araya, are excellent for their knowledge and advice, outstanding service provided 24/7, and business visions and business goals.

Nicolás Yuraszceck’s work is impeccable.

Nicolás Yuraszceck and director Carlos Araya are very good professionals who dominate their subject.

Key clients

Grupo ICB

SmartMining

Soquimich (SQM)

Autodesk

Comscore

Google

Falabella Group

Geoblast

Watts

Transportes Prambs

DirecTv

Hexagon

Empresas de Ferrocarriles del Estado

Mercado Libre

Arcor

Coordinador Electrico Nacional

Singular Coffee

Dafiti

Vitamina

Aintech

Correos Chile

Amazon Prime

Netflix

Teck

Silice

Polychem

COPEC

Wados

Compara Online

Los Andes Tarjeta de Prepago

Imicar

Work highlights

  • Assisted Grupo ICB with its trade mark portfolio and labelling strategy, including trade mark infringement litigation.
  • Assists SQM with designing and implementing legal strategies to protect intangible assets.
  • Defended Geoblast against IP infringement litigation.

Muñoz Jeanneret Alvarez

Boutique law firm Muñoz Jeanneret Alvarez advises on a broad range of IP matters, including obtaining and preserving industrial property rights such as trade marks, patents, utility models, industrial designs and geographical indications. Other areas of notable strength are copyright, domain names and due diligence procedures, as well as IP-related contracts. The key practitioners are Noëlle Jeanneret (member of the board at The Chilean Intellectual Property Association for 2020-2022), whose practice includes prosecution issues and the management of IP portfolios; and fellow name partner and IP specialist Carmen Paz Alvarez.

Porzio Ríos García

Porzio Ríos García‘s sizeable IP group consistently advises on the prosecution and litigation of patents, trade marks, utility models, industrial designs, copyrights, domain names, advertisements and plant varieties. It is also active in anti-counterfeiting actions, IP-related contracts and patent applications. The practice is jointly led by name partners: Marino Porzio, a former World Intellectual Property Organisation officer; Hernán Ríos de Marimón (litigation, trade marks, patents, copyright and domain names); and Cristóbal Porzio, whose broad practice includes industrial property contracts. The second line of advisers features IP partners Marcelo Correa and Antonio Varas, while Mercedes Valdivieso (patents) and Josefina Mora (trade marks) are key associates.

Practice head(s):

Marino Porzio; Hernán Ríos de Marimón; Cristóbal Porzio Honorato

Key clients

Natural Response

Desert King Chile

Weir Minerals

BHP Billiton

Ford Motor Company

Banco Itau

Huawei

Universidad Del Desarrollo

Universidad De Santiago De Chile

SMU

Mbi Inversiones

Dr Ing H C F Porsche Aktiengesellschaft

Hyundai Motor Company

Jaguar Land Rover

Mastercard International

Comercial E Industrial Plásticos Hoffens

Compañía De Petróleos De Chile (Copec)

Cooperativa Agrícola Pisquera Elqui

Helm

AXA

Natura Cosméticos

The Body Shop

Avon

Puig France

Work highlights

  • Assisted Weir Minerals with obtaining a patent for a pump intake device.
  • Assisted Universidad de Santiago de Chile with an application concerning a food product.
  • Assisted Olivos del Sur with one of its main marks.

Sáenz de Santa María Abogados

Established in 2016, Sáenz de Santa María Abogados is highly active in IP rights-related advisory work, trade marks, patents and plant varieties, including prosecution and enforcement matters; its sector expertise covers primarily food, advertising, product manufacturing, education and IT. The key figures to note are founding partner and intellectual and industrial property specialist, Pablo Sáenz de Santa María; and former Alessandri & Compañía Abogados patent attorney José Manuel Urenda, who is a patent and trade mark prosecution expert.

Villaseca Abogados

Villaseca Abogados' intellectual and industrial property practice has a strong track-record in advising on copyright, trade marks, patents and distinctive signs. It also fields specialists in domain names, image rights, geographical indications, appellations of origin and enforcement matters. The principal advisers are: managing partner Max Villaseca, who leads the firm’s internet domain and trade mark practices; law enforcement and litigation leader Felipe Pavez; industrial property expert Loreto Vera C, who heads the firm’s innovation and plant variety protection department; Eduardo Molina V, a specialist in invention patents, utility models and industrial designs; and copyright head Alvaro Arévalo P.

Beuchat, Barros & Pfenniger

Housing specialists in a wide range of IP matters, Beuchat, Barros & Pfenniger's practice covers obtaining and protecting patents, along with copyright matters and the defence and prosecution of trade marks. Other key areas range from industrial designs, plant varieties and health product registrations, to anti-counterfeiting, unfair competition-related IP issues, and licensing and distribution contracts. Experienced partners Andrés Melossi JiménezLuis Felipe Vinagre Larraín and Rodrigo Puchi Zurita are all active in intellectual and industrial property work.

CMS Carey & Allende

CMS Carey & Allende’s three-member IP group specialises in the protection of industrial and intellectual property, particularly in relation to brands from the banking, technology, media, life sciences and fast-moving consumer goods sectors. Representative advice covers trade marks, patents, copyright, domain names, counterfeiting and piracy. The firm also has robust litigation and data protection practices. Leading the IP group, Matías Somarriva has substantial experience in trade marks, patents, industrial designs, copyright and counterfeiting.

Practice head(s):

Matías Somarriva

Testimonials

Innovative and clear strategies at reasonable costs, with Matías Somarriva efficiently managing the IP area.

The skill and knowledge of Matías Somarriva stands out – great litigant and strategist.

Key clients

Inversiones Renacer

Snyder’s-Lance

Spartan Motors

Papaiz Udinese Metais Industria e Comercio

Kinetik Sport

East Penn Manufacturing Co

Suntory Holding

Juegos Educativos

Sicom Chile

Speed Truck

Work highlights

  • Assisted Inversiones Renacer with a trade mark claim.
  • Assisted Snyder’s-Lance with filing for a change of name from Kettle Foods (following a merger).
  • Assisted Spartan Motors with recording the assignment of trade marks to the new owner, following the sale of a portion of its business to Spartan Fire.

Dentons Larrain Rencoret

Dentons Larrain Rencoret's IP practice advises both Chilean and foreign clients on building, protecting, exploiting and defending IP assets, its expertise primarily covering patents, trade marks, licenses and technology transfers. In recent matters, the team has been particularly active in relation to new technologies, such as software, artificial intelligence, machine learning and big data. The practice is co-led by Maria Carolina Del Rio and Maria Mercedes Londoño, who until 2019 were at the Chilean office of Iberian IP firm Clarke, Modet & Co, where Del Rio was CEO and Londoño led the technical and legal team.

Practice head(s):

Maria Carolina Del Rio; Maria Mercedes Londoño

Testimonials

This office has high-quality professionals who are willing to meet all clients’ needs.

Maria Mercedes Londoño – efficient and quality responses.

Key clients

Odds Industries

Merck

Daily Foods

Ecometales

CECs

Adama Agricultural Solutions

Nextleaf Solutions

BelSport (now Yáneken)

MClanahan

Bertech

ViacomCBS

Work highlights

  • Advising Chilean start-up Odd Industries on data privacy issues and the transfer of technology.
  • Assisting Merck with the protection of its intangible assets.
  • Assisting Nextleaf Solutions with protecting an innovation involved in the process of cannabis extraction and distillation.

Flores Acevedo

The nine-strong practice at Flores Acevedo is well known for advising start-ups, entrepreneurs, inventors, business incubators and accelerators, SMEs and R&D centres. The firm’s patent department is predominantly focused on the mining sector, while the trade mark team acts for a broad range of clients. Founding partner Pablo Acevedo leads the corporate law and IP practices in the Santiago office, while José Miguel Flores provides further partner-level support. Key associate Carolina Toro Bragg routinely assists Acevedo with both transactions and IP prosecutions.

Practice head(s):

Pablo Acevedo; José Miguel Flores

Testimonials

The team concerned itself to understand the business of our companies – very strong in IP and innovation, which sets it apart from more conventional law firms.

Provides constant calls and meetings to clients- great service.

Great for its agility and professionalism.

The team is very efficient and wise – our trusted team for IP in Chile.

Pablo Acevedo is very efficient and always provides a quick response.

Associate Carolina Toro Bragg provides adequate follow-up and guidance on all the issues consulted upon.

Key clients

Grupo Lagos

Compañía Puerto de Coronel

Madesal

Compite

Imagine Holding

Lab4U

Pegas con Sentido

Grupo Velvet

Mindugar

Highservice Corp

Trefimet

Resafe

Mel Alimentos

Mi Robotic Solutions

Carmen

Polynatural Holding

Casa W

Fundación Chile

Tastets Systems

Buffalo Waffles

Ciencia Pura

Georock

FiiS Global

NTI

Lobbycontrol

Clean Water

Instituto Latinoamericano de Comercio Electrónico Econfianza

uMov

Holding FTJG

Comercializadora Zenta Group

Gogo Labs

Parsec

Work highlights

  • Assisted Mi Robotic Solutions with protecting inventions.
  • Assisting Holding FTJG with the management of its trade mark portfolio.
  • Assisted Clean Water with filing trade marks, securing trade secrets and filing a patent application.

Guerrero Olivos

The IP practice at full-service firm Guerrero Olivos focuses on trade mark and patent prosecution, IP litigation and contracts, and denomination of origin and geographical indications procedures, as well as technology transfer, data privacy, anti-counterfeiting matters and customs issues. Recently re-elected to the International Trademark Association Enforcement Committee for the 2022-2023 period, senior associate and IP group head Diego Morandé is an expert in trade mark and innovation protection, as well as being experienced in the defence of IP rights; and associate Alejandra Leiton is a key member of the IP, data protection and new technologies groups.

Practice head(s):

Diego Morandé

Testimonials

A team with good responses and use of resources.

Commitment to clients, with genuine empathy as if our issues are their problems too.

Senior associate Diego Morandé and associate Alejandra Leiton are the people I work with. They make a good team and deliver effective responses.

Diego Morandé is fast and always on time.

Key clients

Exportadora Unifrutti Traders

Parfums Christian Dior

Volvo Financial Services

Sympla

Banco Santander

CAP

Rust Oleum

Grupo Teka

Detroit

DyD

Papel Pintado

BUK

Inversiones Mitta

Genius Sports

Rakin

Work highlights

  • Advised Chilean start-up BUK on the assignment of 14 trade marks.
  • Advised Unifrutti Traders on several IP matters, including its trade mark portfolio worldwide, and filings, renewals and oppositions.
  • Advised Parfums Christian Dior on the registration of trade mark “Perfume Shake” in Chile.

Larrain y Asociados Abogados

Larrain y Asociados Abogados' IP team has expertise in both industrial property matters and copyright issues, as well as specialisms in music industry-related licence contracts, plant varieties, and agreements combining constitutional law and IP issues. The practice’s experience also covers litigation before the Chilean Trademark Office, the Industrial Property Court and the Supreme Court, along with domain name disputes. The team is currently led by José Pedro Baraona, following Pablo Ruiz-Tagle’s temporary departure to serve as Dean of the University of Chile’s School of Law; and senior associate Sebastián Prieto handles many of the firm’s IP clients.

Practice head(s):

José Pedro Baraona; Sebastián Prieto

Key clients

Watt’s

Universal Music

Pelican Products

Compañía Papelera del Pacífico

Ab Tetra Pak

Mccain Foods

Epsilon Consulting

Stella McCartney

Viña Santa Carolina

Distribuidora de Alimentos Globeitalia

Aeroports de Paris

Sun World International

Recupac

Compañías CiC

Inmobiliaria Parques y Jardines

NCH Hoteles

Serinfo

Stepan Company

Fundacion Minera Escondida

Work highlights

  • Assists Aeroports de Paris with all its IP matters, including trade mark filings.
  • Assists Sun World International with all its IP matters, including trade mark filings and IP defences against third parties.
  • Advises Compañía Papelera del Pacífico (and its subsidiaries Empresas Coipsa and Energía Pacífico) on all its IP matters, including trade mark filings.

Puga Ortiz Abogados

In operation for over 90 years, Puga Ortiz Abogados routinely advises on the registration and control of invention patents, utility models and industrial designs. It also assists with the registration and defence of trade marks, copyrights, domain names, geographical indications and appellations of origin; and houses specialists in industrial property infringements, as well as technology transfer, franchising and licensing issues. Leading the IP practice, Cristián Mir is a former director of the Chilean Intellectual Property Association, where Mir worked on the country’s Industrial Property Law Reform. The senior associate to note is intellectual and industrial property expert Yair Riquelme.

Practice head(s):

Cristián Mir

SCR Abogados

IP boutique firm SCR Abogados routinely handles day-to-day IP issues, and is experienced in trade mark, licensing and patent matters (among other IP rights). In addition to its expertise in trade mark filings and prosecution, the group assists with domain name disputes, patent matters, plant breeder’s rights, trade secrets, IP-related transactions, and the advertising and distribution of regulated products. The practice is led by former Baker McKenzie Chile IP and healthcare practices’ head, Juan Francisco Reyes, who, in addition to his longstanding focus on patent law and plant breeder’s rights, advises on life sciences matters.

Practice head(s):

Juan Francisco Reyes

Testimonials

Very good service and excellent response times.

Detailed analysis, but with simple and practical explanations.

The commitment and special care for the client are outstanding, and the team’s vast experience in both IP and corporate matters are evident.

Willingness to explain the technical aspects of cases, so that you will be specifically aware of what is being dealt with.

One of the strengths of the team is the speed of response, as well as its treatment of clients – really quite different from other firms. That speed and empathy with the client, combined with solid IP knowledge add up to a highly valuable service from the client’s perspective.

Juan Francisco Reyes stands out for his great knowledge of this area, capacity for analysis and evaluation of different scenarios, assertiveness in his recommendations, speed of response and chemistry with the client.

Key clients

Universidad de Antofagasta

Andres Herane

Gate Gourmet Catering Chile

Comercial Lupulos

Low O2 Chile

Grunenthal

Axkati Legal

Marcelo Coulon

OSA

Memebox

InFood Chile

Sociedad Editora y Periodística Chañarcillo

Pacific Mining Parts Chile

Ediciones Financieras

Pro Salud Chile

Von Seidels.

I-MAB Biopharma

USL

W L Gore

Llawken

Indimin

Hotel Nippon

Work highlights

  • Assisted Pacific Mining Parts Chile before the customs authorities to request the release of detained products, as well as in court to defend IP infringement proceedings.
  • Assisted PSP Chile/Low O2 with the filing of Chilean patent and trade mark applications.
  • Assisted Laboratorios Andromaco with updating the ownership of approximately 80 records during a recent 12 month-period.

Santa Cruz IP

Launched in 2019, specialised IP, innovation and technology transfer boutique Santa Cruz IP routinely advises on patents, trade marks, copyright and geographical indications. The practice is co-led by Maximiliano Santa-Cruz, whose career includes nine years as head of the Chilean Patent and Trademark office; and Gonzalo Sánchez, who joined as a partner from Sánchez Serrano in 2021 and has significant expertise in both domain names and the protection of appellations of origin. The key figure at associate level, Pedro Vergara is an intangible assets management specialist. Mariano Wood moved to Schusterdautor in May 2022.

Practice head(s):

Maximiliano Santa-Cruz; Gonzalo Sánchez Serrano

Testimonials

The entire team has been very kind, and willing to solve the problems of our company in relation to industrial protection issues.

The team has given us all the relevant information for the area upon which we mandated the group – great experience and knowledge.

These lawyers know the law very well since they themselves were the developers of it, and they have solid experience and good contact networks.

A team that adjusts to the needs of clients, in terms of billing, time requirements and presentation of information.

Attentive, agile and clear- diligence and quality.

Maximiliano Santa Cruz is a lawyer who really understands his clients, and has a global vision of what a brand’s value implies today.

Gonzalo Sánchez Serrano has had a wonderful attitude towards us and our brands, and he is always up to date with any news.

Among the associates, Pedro Vergara personally attended the case and his advice was clear, complete and timely; and Mariano Wood is outstanding.

Key clients

Galería CIMA

Ecomsur

CRT+IC

Fintech Chile

Sergio Larraín Succesion

Aquachile

TAAG Genetics

Work highlights

  • Acted for Galería CIMA in lawsuits against the use of audiovisual works.
  • Assisted  with a trade mark registration.
  • Assisted Builderscomm with defending and registering trade marks.