Intellectual property in Chile
Carey's 'team is always focused on understanding clients' real needs and its huge experience allows the practice to possess deep knowledge of all new trends in the region'. It is highly rated for its prosecution and litigation of trade marks, patents and industrial designs, geographical indications, designations of origin, plant varieties, and domain names. Other areas of strength include copyright, anti-counterfeiting, technology-contracting, licensing, franchising, advertising, trade secrets, IP management, and IP-related unfair competition. The practice's active clients include Adidas, PepsiCo, Pfizer, Televisa and Nestlé; recent highlight work included acting for the latter in its successful opposition claim at the Supreme Court against a competitor's LA CREM trade mark. Other matters included advising PepsiCo on a food labelling case filed by the National Consumer Service (SERNAC) against its subsidiary Evercrisp, which claimed that figurative trade marks constituted misleading advertising. Guillermo Carey and Francisco Carey co-head the firm’s IP and IT group, while Paulina Silva and Fernando García are the counsels to note.
Sargent & Krahn
Sargent & Krahn 's 'level of involvement is unique; the team offers well-structured and prompt responses that are applicable to clients' businesses'. The practice group handles large portfolios of trade mark and patent prosecution and litigation work in Chile; moreover, of late it has been particularly active in IP-related technology, media and privacy matters, regulatory issues affecting IP, and infringement disputes. Key clients include Johnson & Johnson, Google, Samsung, Sanofi-Aventis, Philip Morris, Red Bull, Facebook and BMW. Recent mandates include acting for Rare Hospitality International (up to Supreme Court-level), in ultimately successful cancellation actions against trade marks CAPITAL GRILLE and GANADEROS CAPITAL GRILL. It also successfully defended The Boots Company's trade mark applications for SOAP & GLORY, against an opposition, and assisted a large wristwatch maker in obtaining the permanent seizure of a shipment of counterfeit wristwatches. Alfredo Montaner, Juan Pablo Egaña and the 'always responsive and attentive' Rodrigo Lavados are all highly rated; other key advisers include senior associates Eduardo Lobos and Pablo Cariola, and associate Felipe Fernández. Since pubication, Lobos has been raised to the partnership, effective January 2020.
Alessandri & Compañía Abogados
Alessandri & Compañía Abogados 's IP team is 'trusted by clients'. The practice fields experts in copyright, trade marks and patent regulation and acts for a prestigious client list including Mars, IKEA, Alibaba, Netflix, L'Oréal , Pfizer and Bayer. Recent matters include assisting KITZ with a cancellation action against a local distributor's trade mark registration. Rodrigo Velasco A is IP managing partner and Rodrigo Velasco S focuses on trade marks, domain names, licenses, franchises, infringements and litigation. Loreto Bresky left the firm and is now director of Chile's National IP Institute but Santiago Ortúzar was hired as partner from Beuchat, Barros & Pfenniger. A strong second tier of senior associates is made up of patent head Francesca Rodríguez, trade mark head Carla Pacheco and Macarena Gatica. Also noted is experienced associate Sebastián Molina.
Claro & Cia.'s IP department has developed a particularly strong practice in sectors such as agriculture, clothing and footwear, cosmetics, food and beverage, mining, pharmaceuticals, technology and tobacco;. The practice covers the full range of IP advice from patent and trade mark registrations, prosecution, and litigation, to the IP aspects of M&A and other corporate transactions; it also acts in niche areas such as data protection and tobacco regulation. Clients include American Airlines, British American Tobacco, General Electric, HanesBrands and Spotify; recent matters saw the team acted for Argentina's Cordeiro y Cía in the prosecution and defence of its VERDEFLOR mark in Chile. Felipe Claro is IP department head, and counsel Paulina Bardón and senior associate Claus Krebs are also highly experienced attorneys.
Johansson & Langlois is widely respected for its assistance with copyright, trade marks and patents; other areas of focus include domain names, industrial designs, utility models, geographical indications, appellation of origin issues and consumer protection. The team is also highly rated for its patent prosecution practice. Andrés Echeverría, Max Montero, Christopher Doxrud and Flavio Belair are all key advisers.
Silva fields experts in trade marks, patents, copyright, transactional IP, and privacy and data protection cases, and the practice group also has sector exertise in the IT, entertainment, media and sports sectors. On the contentious side, the department conducts IP-related civil, criminal and administrative actions, as well as assisting with IP issues involving new technologies. Key clients include WhatsApp, Instagram, Uber Technologies, Entel Chile and Turner Broadcasting System; recent highlights include advising California Pizza Kitchen on the successful registration of its brand before the Chilean Industrial Property Authority. Juan Pablo Silva, Francisco Silva, Rodrigo León , Andrés Grunewaldt and Ricardo Montero are the names to note; Sebastián Alvarado is an experienced associate.
Villaseca Abogados is widely respected in the market for its expertise in copyright, trade marks and distinctive signs, and patents. Additional areas of note include image rights, domain names, geographic indications and appellations of origin, and the enforcement of IP rights. The key contacts of a highly-specialised team are managing partner and trade mark head Max Villaseca, law enforcement and litigation head Felipe Pavez, copyright leader Alvaro Arévalo P, innovation and plant variety protection head Loreto Vera C, patent specialist Eduardo Molina V, and general counsel Bernardo Serrano.
Albagli Zaliasnik's 'commercial-awareness levels match international standards'. The practice is best known for anti-counterfeiting, IP disputes, patents and trade mark prosecution, along with advertising law, and IP-related competition and antitrust issues. Highlight work saw the team represent Inversiones Santa Teresita at the Supreme Court, successfully obtaining nine cancellation actions and multiple oppositions involving trade mark Termas de Chillán after lenghty litigation. Senior associate Eugenio Gormáz is intellectual and industrial property group director; fellow senior associate Oscar Molina leads the IT, media and data privacy group; and Ariela Agosin oversees trade mark, patents, copyright and licensing issues, including litigation. Former associate María José Canales joined Philippi Prietocarrizosa Ferrero DU & Uría in August 2018.
Magliona Abogados, formerly known as García Magliona y Cía Abogados, is 'consistent and effective'. The practice is highly rated for its assistance to telecoms companies, software producers and internet service providers with patent and trademark litigation and enforcement, software licensing, IP transactional issues, and copyright matters. Clients include Google, Falabella, Autodesk, Pfizer, eBay, Netflix and Hexagon; recent matters saw the team assist Grupo ICB with its trademark portfolio and labelling strategy, including trademark infringement litigation. Claudio Magliona, Nicolás Yuraszeck and Giovanni Donati are the main advisers.
Porzio Ríos García is well known in the market for its expertise in protecting and enforcing IP rights, as well as advising on patents, copyright, trade mark registrations and internet domain names. The practice also fields specialists in plant breeders’ rights, anti-counterfeiting, data privacy and franchising. Founding partner Marino Porzio has 'great knowledge', Cristóbal Porzio's broad practice includes advising on industrial property contracts, and Marcelo Correa is a highly-rated IP litigator.
Beuchat, Barros & Pfenniger
Beuchat, Barros & Pfenniger's practice covers patents, copyright, trade marks, domain names, industrial designs, plant varieties and health product registrations; it is also experienced in licensing and distribution contracts, unfair competition-related IP issues and anti-counterfeiting matters. Andrés Melossi Jiménez, Luis Felipe Vinagre Larraín and Rodrigo Puchi Zurita are the principal contacts.
CMS Carey & Allende's IP practice covers trade marks, patents, copyright, domain names, counterfeiting, litigation and data protection. Recent mandates include successful defence of Cencosud Retail against a criminal complaint regarding trade mark misuse. Matías Somarriva 'provides a quick and excellent service; he is an experienced professional who provides valuable insight into addressing counterfeiting issues effectively'. Paz Marambio is a well-regarded senior associate. Other active clients include Ingeniería y Proyecto Tesla, Speed Publicidad and Cepas Argentinas.
Covarrubias & Cía
Covarrubias & Cía 'has outstanding capabilities and provides the perfect strategy for clients' interests'. A specialist IP law firm, it has expertise in sectors such as chemicals, technology, paper, food and drink, and mining and metals. Notable clients include Samsung, Pfizer, Novartis, Monsanto and Quickfood, which the team recently represented in the revocation of a domain name. Managing partner Arturo Covarrubias and associate Sofía Covarrubias are 'always available for clients and provide immediate responses'; associate Matías Valenzuela heads the patent group.
Dellafiori Abogados' 'advice reflects the firm's strong expertise in IP; it also has a strong record for legal disputes'. The firm is focused on corporate IP issues, trade marks, patents, domain names, industrial designs, utility models and copyright, but the team also assists with trade secrets, internet-related IP issues, new technologies and data protection. Eurofarma Chile and Enel are clients; and recent mandates saw the team advise Laboratorios Maver on the acquisition of a trade mark. Enrique Dellafiori is 'a recognised IP expert who has a hands-on approach'; Mauro Dellafiori and senior associate Daniel de Santiago are also key figures in the practice.
Guerrero Olivos' 'very professional team' is experienced in advising on trade mark and patent prosecution, IP litigation, IP contracts, technology transfer and data privacy, among other specialisations. Recent amtters saw the team active in the digital sector, advising Burn to Give (an app that converts calories burned during exercise into nutrition for children in need), on filing its trade mark. Bioagro and Pernod Ricard are other active clients. Senior associate Diego Morandé M , who 'shows a high level of professionalism' heads up the IP practice; former senior counsel Marcos Morales has left the firm.
Specialised intellectual property boutique Jarry IP 's founding and managing partner, Allan Jarry, has over 20 years' IP experience. Also key to the group are: Olga Moreno, who heads the patent division; and recently promoted partner and legal-group head, Magdalena Barros, who advises on trade marks, domain names, copyright, patents and personal data. In recent work, the team successfully assisted Japanese multinational corporation Fuji Heavy Industries (now Subaru) with a trade mark opposition claim.
Puga Ortiz Abogados
Puga Ortiz Abogados' 'accurate, reliable and effective team' is experienced in advising on trade mark portfolios, patents, industrial designs, appellations of origin, copyright, domain names and new technologies. Recent work includes assisting Chilean copper mining company Foremin with two patent applications. Cristián Mir is a well-recognised expert in trade marks, domain names and copyright; senior associate Yair Riquelme is noted for IP disputes.
Sáenz de Santa María Abogados
Sáenz de Santa María Abogados 'has an effective and swift team that responds very well to all clients' requirements and achieves high standards of service'. The specialised IP boutique has extensive knowledge of IP litigation, trade mark protection, copyright, patents, utility models and industrial designs. In recent work, the team acted for UK-based Intertek, a multinational assurance, inspection, product-testing and certification company, in its successful registration (on appeal) of the company's name as a trade mark. Founding partner, practice head and IP all-rounder Pablo Sáenz de Santa María is 'a great attorney to work with'; younger partner José Manuel Urenda joined the firm in late 2017 to to develop the firm's patent and technological practices and to advise clients on IP prosecution and disputes.