‘A constant support in matters that are a priority for brands', Carey's large intellectual property (IP) practice is consistently sought out for the identification and protection of IP rights. The team’s substantial experience covers the prosecution and litigation of trade marks, patents and industrial designs, along with geographical indications, designations of origin, plant varieties, and domain names. The department’s expertise further encompasses copyright, anti-counterfeiting, privacy, licensing, trade secrets, intangible asset valuations, and IP management. Guillermo Carey is a go-to practitioner for pharmaceutical laboratories requiring advice on regulatory matters and patent infringements; and Francisco Carey is ‘highly specialised in patent prosecution and litigation' (in addition to trade marks, licensing and anti-counterfeiting). The second line of key advisers comprises counsel Fernando García, a well-known specialist in invention patents, and director Jorge Fuentes, who advises companies on the design and implementation of IP-based transformative innovation strategies. Within the firm’s associate pool, Catalina Aldunate specialises in trade marks, domain names, anti-counterfeiting and licensing; and Carla Encalada‘s workload covers trade marks, patents and domain names, along with IP litigation.
Intellectual property in Chile
Carey
Practice head(s):
Guillermo Carey; Francisco Carey; Fernando García; Jorge Fuentes
Testimonials
‘Without a doubt, something that characterises Carey is its precision and speed. The advice always goes beyond what is strictly requested.‘
‘Always looks for new ways to provide clients with solutions – a constant support in matters that are a priority for brands.’
‘Carey’s IP team has shown the ability to anticipate conflicts and resolve complex situations favourably, offering clients alternatives that best suit their internal scenarios.’
‘Excellent analysis capabilities, thoroughness in the legal opinions issued, and speed in responding to the client.‘
‘Excellent service.‘
‘Francisco Carey is one of the best IP lawyers around. He is always available and takes on his clients’ problems as his own. He is also very judicious in his advice, always weighing all possible scenarios.’
‘Francisco Carey is highly specialised in patent prosecution and litigation.’
‘Fernando García is a standout counsel.‘
Key clients
Nestlé
Essity
Codelco
Crocs
Algramo
IMDEX
Clorox
Wenco
WildFoods
Mercado Libre
Work highlights
- Assisted Wenco with the defence of its registered patents in three nullity actions, which were filed by KD Pack.
- Advised Altunis (part of business group Cipriani), on the registration and opposition procedures to obtain and consolidate protection over the trade mark “CIPRIANI” in Chile.
- Advised Catalina Abbott, a well-known Chilean artist, on the enforcement of her copyright to an artwork that was used for labelling wines bottles by Viu Manent Winery.
Sargent & Krahn
With ‘the greatest IP expertise in Chile', Sargent & Krahn fields a sizeable 22-strong department that handles large trade mark and patent portfolios, its expertise covering both prosecution and contentious issues. Recent workloads feature life sciences and pharma matters (including vaccine patents); and the firm’s litigation department, particularly its anti-counterfeiting section, routinely assists with the seizure and destruction of counterfeit products before Customs (alongside IP-specialised police brigades). The firm houses several experienced practitioners, namely: senior counsel Alfredo Montaner, who heads the trade mark and domain name teams; Juan Pablo Egaña, a specialist in invention licenses, industrial secrets and technology transfers; and technology, privacy and media leader Rodrigo Lavados. Also integral to the practice, Eduardo Lobos routinely litigates industrial property matters before the Administrative Authority, as well as Chile’s civil and criminal courts; patent, trade mark and life sciences expert Cristian Barros ‘delivers very practical advice'; and Pablo Cariola (raised to partner in January 2023) leads the infringement department. At associate level, senior Gabriel Pensa, Daniela Guerrero and Alejandra Varela are also active team members.
Practice head(s):
Alfredo Montaner; Juan Pablo Egaña; Rodrigo Lavados; Eduardo Lobos; Cristián Barros; Pablo Cariola
Testimonials
‘The largest team and with the greatest IP expertise in Chile.’
‘The partners in this area are not only absolutely committed, they also have the ability to face IP problems from a legal and political-institutional perspective.‘
‘S&K is pro-active, very knowledgeable (both in terms of the legal issues as well as the industry), and great to work with.’
Key clients
Johnson & Johnson
Viña Concha y Toro
Samsung
Sanofi-Aventis
Philip Morris
Red Bull
Equifax
BMW
Dow Agrochemicals
Astrazeneca
Lundbeck
Syngenta
Merck
Moderna
Fundación DUOC de la Pontificia Universidad Católica de Chile
Virutex Ilko
América Móvil
Work highlights
- Advised JX Nippon Mining & Metals Corporation on a prosecution and application before the Industrial Property Court, which overturned a previous decision of the National Institute of Industrial Property.
- Assisted Lego with locating, seizing and destroying almost 13,000 block building units (with figures that resembled LEGO’s famous minifigures).
- Assisted Canal 13 with obtaining trade mark protection in class 41 for “GURU GURU”.
Silva
IP firm Silva has an enviable market reputation for its advice to domestic and foreign companies on trade marks, patents, copyright, data privacy, and domain names. The 11-member practice is also sought out to assist with geographical indications and designations of origin, along with significant enforcement and litigation work. Co-leading the practice, founding and managing partner Juan Pablo Silva's track record includes representing the IP rights of multinational companies from the financial services, retail, telecoms, media and sports industries; Francisco Silva
's current practice incorporates heavyweight international trade mark and patent cases; and Ricardo Montero is a trade mark, domain name and copyright expert. The second line of key practitioners features Andrés Grunewaldt, a litigator and specialist in geographical indications and designations of origin; copyright and patent practitioner Rodrigo León; and recently-promoted partner Sebastián Alvarado. The practice further expanded during 2022 through the recruitment of associates Manuel Concha, Isidora Palma and Victoria Correa from Ruiz Salazar, Grupo EFE (state railway company) and software company Lemontech, respectively.
Practice head(s):
Juan Pablo Silva; Francisco Silva; Ricardo Montero
Key clients
Triumph international
Paská
Meta Platforms
The Saul Zaentz Company
Caryn Mandabach Productions
Kora Organics by Miranda Kerr Pty
Samsung Electronics Co
Advance Magazine Publishers
The NOT company
Work highlights
- Advised Triumph International on the reproduction of a trade mark and name of a famous person who died less than 50 years ago.
- Assisted Meta Platforms with filing an opposition to a request for the registration of the “META” trade mark (for a company that offers computer products).
- Assisted The Saul Zaenz Company with its opposition to a trade mark application.
Alessandri & Compañía Abogados
Alessandri & Compañía Abogados' ‘committed' and large IP practice comprises experts in Andean legislation, as well as engineers, chemists, biotechnologists and designers who assist with the processing of applications, along with freedom-to-operate issues, prior art studies, and invention patent drafting. The IP group is also able to leverage the firm’s expertise in tax, labour law, corporate matters, contractual issues, and litigation. The managing partner of the firm’s technology and IP practices, Rodrigo Velasco A specialises in domain names, trade marks, patents, data protection, and software and internet issues; and Santiago Ortúzar's practice, in addition to patent asset-related licensing and M&A, includes biotech patents, plant varieties and data privacy. The second line of key practitioners features recently-promoted patent and trade mark director, Carla Pacheco, whose workload encompasses portfolio management, advertising, unfair competition (including related litigation), and the management of overseas portfolios in the Latin American, North American, European and Asian markets.
Practice head(s):
Rodrigo Velasco A; Santiago Ortuzar
Testimonials
‘The best in the national market.‘
‘Shows great interest in understanding clients’ business and delivers value through all its recommendations.’
‘Committed and very knowledgeable about the law.‘
Key clients
L’Oréal
Camanchaca
Compañía de Petróleos de Chile Copec
Grifols Worldwide Operations
Tresmontes Lucchetti
Agroindustrial y Comercial Superfruit
Warner Bros
Inmobiliaria Nueva Costanera
Nanotec
Baron Philipe de Roschild
Work highlights
- Assisted Camanchaca in relation to the sign “ÚNICO CAMANCHACA”, and an action based on the legal prohibition of registering national emblems.
- Assisted Salinas y Fabres with filing an opposition against Ubicar Chile’s trade mark application for “SMARTCAR”.
- Assisted ON*Net Fibra Infraco in relation to an action based on the generic nature of the mark “ON*NET FIBRA”.
Claro & Cia.
Full-service law firm Claro & Cia. fields an IP practice with enviable expertise in patents, brands, and the IP aspects of software, advertising, data protection, consumer law, and unfair competition. Other areas of strength include the IP side to transactions and regulatory issues. The firm also houses industry specialists in cosmetics, mining, pharma, technology and tobacco, along with agriculture, food and beverage, and clothing and footwear. Heading up the practice, Felipe Claro is a well-known IP expert; and advising on the protection of IP portfolios at both international and national levels, the practice of recently-promoted partner Paulina Bardón covers trade marks, patents, geographical indications, copyright, software and internet issues. Within the associate ranks, senior Claus Krebs assists with patent and trade mark issues, while Mahish Sadarangani, Trinidad Rojas and Bryan Kernitsky also maintain active IP practices.
Covarrubias
‘Highly specialised IP firm' Covarrubias houses a 10-strong team that focuses on patents, life sciences, trade marks, domain names, copyright, data protection, and litigation. The multidisciplinary team comprises several experienced practitioners, namely: founding partner Arturo Covarrubias, a ‘brilliant and sharp professional‘, who specialises in industrial property and copyright protection strategies, as well as industrial property litigation involving pharmaceuticals, biotechnology, food, retail, and telecoms; and international trade mark head Sofía Covarrubias, who ‘knows her IP matters perfectly'. At associate level, biochemist and patent team head Matías Valenzuela specialises in patent protection strategies, invention patents, utility models, and industrial designs and drawings; Diego Bilbao heads the firm’s litigation offering; and national trade mark department leader Camilo Cammas (replacing recent departee Victor Ahumada) is a May 2022 hire from the Cuidando Derechos Chile Foundation.
Practice head(s):
Arturo Covarrubias; Sofía Covarrubias; Matías Valenzuela; Diego Bilbao; Camilo Cammas
Testimonials
‘Covarrubias is a highly specialised IP firm and has a great team of professionals. Its patent area is very solid as it has patent engineers and lawyers who provide impeccable advice; and the brand team stands out for its quick, accurate and timely responses.‘
‘Being a boutique firm means it provides a much more personalised treatment.‘
‘The Covarrubias team is excellent – always concerned with providing good advice, follows up on clients’ requirements, and resolves all doubts that exist.‘
‘Always concerned about the client, no matter the problem.‘
‘Whether small or large clients, they are always there for them!’
‘Arturo Covarrubias is a brilliant and sharp professional, who designs innovative and aggressive strategies for the good of his clients.‘
‘Arturo Covarrubias and Sofía Covarrubias are great strategists, which gives them a plus and generates added value to their service.’
‘Sofía Covarrubias is a lawyer who knows her IP matters perfectly; and is characterised by her quick and accurate responses, as well as the personalised service provided to clients.‘
Key clients
Antofagasta Minerals
Empresas CMPC – CMPC Tissue
Albemarle
Crocs Inc
Telefónica
Xiaomi
Ajinomoto Cambrooke
Petco Animal Supplies Store
BRF Singapore Foods
CMR Surgical
Work highlights
- Assisted Minetec with filing a nullity action against a granted patent of Joy Global.
- Represented Empresas CMPC in an opposition lawsuit against a patent application, which related to the production of kraftliner paper.
- Assisting AMVAC with the management of its portfolio throughout Central and South America, including the Caribbean.
Porzio Ríos García
Porzio Ríos García's ‘incredibly responsive' IP practice routinely enforces, prosecutes and litigates IP rights, such as patents, trade marks, utility models, industrial designs and copyright. The 11-strong department also encompasses experts in domain names, advertisements, plant varieties, anti-counterfeiting actions, and data protection. Other areas of note are IP-related contracts, new technologies, artificial intelligence, and prior art searches. The team is co-led by name partner Cristóbal Porzio, who assists with both the advisory and litigation side to trade marks, patents, technology transfers and copyright; and Marcelo Correa, whose broad practice covers commercial brands and patents. The next line of key partners features trade mark, copyright and domain name experts Antonio Varas, and Bernardita Torres; and at founding partner level, Marino Porzio (‘possibly the most outstanding professional in the country') and former legal director of the Ministry of Foreign Affairs, Hernán Ríos de Marimón, are now counsels at the firm. Within the associate ranks, Mercedes Valdivieso is experienced in patent work, while Josefina Mora is an active trade mark lawyer.
Practice head(s):
Cristóbal Porzio; Marcelo Correa
Testimonials
‘A solid team both from a technical and legal point of view.‘
‘Proactive, and the partners intervene when necessary, even when clients do not request it. They are also very well equipped technologically.’
‘The treatment from partners and associates is extremely cordial, but not at the expense of professionalism.‘
‘The Porzio team is incredibly responsive and a top provider of legal expertise in the trade mark space. Clients entrust their most significant matters in Chile to Porzio.‘
‘Antonio Varas is extremely responsive and knowledgeable – always thorough in every way.‘
‘Cristóbal Porzio is a dedicated leader, as well as a thoughtful and wise practitioner.‘
‘Cristóbal Porzio is great for important and complex IP cases.’
‘Counsel Marino Porzio is possibly the most outstanding professional in the country in terms of training, knowledge and experience.‘
Key clients
Flux Solar Energías Renovables
Ampere Power Energy
BHP Billiton
Ford Motor Company
Banco Itau
Huawei
Universidad Del Desarrollo
Universidad De Santiago De Chile
SMU
Dr Ing HCF Porsche Aktiengesellschaft
Hyundai Motor Company
Jaguar Land Rover
Mastercard International
ClimatePartner
Bentley Motors
AXA
Natura Cosméticos
The Body Shop
Avon
Puig France
Comercial E Industrial Plásticos Hoffens
Compañía De Petróleos De Chile Copec
Cooperativa Agrícola Pisquera Elqui
HELM
Work highlights
- Assisted Flux Solar Energías Renovables with the protection of its trade marks.
- Advised ClimatePartner on the registration of a certification mark.
- Assisted Transportes Fishcare with a patent paternity claim.
Albagli Zaliasnik
The eight-strong IP department at Albagli Zaliasnik is experienced in digital and internet rights, copyright, trade marks, patents, and anti-piracy issues. The team also advises on IP licensing, and industrial and business secrets. A partner since 2020, IP group director Eugenio Gormáz routinely assists with the protection of industrial property rights for retail, pharmaceutical, telecoms and transportation sector clients. Litigation head Ariela Agosin also maintains an active IP practice; and at senior associate level, Antonia Nudman's practice focuses on the defence and protection of intangible assets, along with new technologies, software, trade marks, patents, and domain names. In late 2022, former senior associate Juan Pablo Zamora departed to found his own firm.
Practice head(s):
Eugenio Gormaz; Ariela Agosin
Testimonials
‘Swift and clear responses.‘
Key clients
La Polar
Walmart Store
Lemontech
Patagon Valley
Work highlights
- Acted for La Polar in a counterfeiting-related criminal complaint filed by the brands Under Armor and Adidas.
- Manages Walmart’s portfolio of international brands in Chile.
- Assisted Lemontech, a service software development company, with proving that the “CASE TRACKING” brand was distinctive enough to obtain legal protection.
Baker McKenzie Chile
The seven-member IP practice at Baker McKenzie Chile advises significant domestic and international brands from a range of sectors, including pharma, fashion, manufacturing, and media and entertainment. The team advises on trade mark, copyright and patent matters, as well as domain names; and its offering covers prosecution, enforcement, litigation, regulatory and innovation-related assistance. The group is additionally experienced in IP-related transactional work, such as licensing and assignments. Heading the team, pharmaceutical and healthcare industry specialist Valentina Venturelli is consistently sought out for trade mark and patent prosecutions. At associate level, senior Sebastián Dorena is active in anti-counterfeiting matters, along with IP litigation, enforcements and prosecutions; and junior Carlos Lazcano also maintains an active IP practice.
Practice head(s):
Valentina Venturelli
Testimonials
‘It is a team that provides quite technical advice. They are ordered in terms of billing and with keping the client up to date with advances in the procedures in their charge.‘
‘The service and attention of Carlos Lazcano stands out.‘
Key clients
Abbott Laboratories
Laboratorios Siegfried
Subway IP
General Motors
Hexxa Inversiones
Too Faced Cosmetics
Astellas Pharma Europe
Caterpillar
Foris Technology
Constructora de Pavimentos Asfálticos Bitumix
Work highlights
- Assisted SAP with filing an opposition against a referred trade mark application.
- Assisted Vestas Wind Systems with filing a trade mark application (“EnVentus”), which was opposed by Imega Ventus.
- Successfully acted for Caterpillar in prosecuting several revocation actions against different domain names.
Dellafiori Abogados
Exclusively focused on IP work, Dellafiori Abogados' wide-ranging practice covers trade marks, patents, drawings and industrial designs. The group is also active in relation to utility models, copyright, trade secrets, and contractual issues; and it additionally advises on new technologies and data protection. Founding partner Enrique Dellafiori is an IP and litigation expert, whose practice encompasses misleading advertising, consumer law, food labelling, and healthcare; and litigation department head Mauro Dellafiori assists international and national companies with the filing and prosecution of trade marks, patents and domain names, as well the corporate aspects of intellectual and industrial property. Franco Dellafiori is also an active litigator, while associate Cristián Carril routinely acts for major food, pharma transport and automobile industry companies in defence-side litigation. Fellow IP associate Constanza Monsalvez joined the team in July 2022.
Jarry IP
Specialised IP firm Jarry IP focuses on IP matters involving universities and entrepreneurs, as well as corporations of all sizes. The six-strong practice advises on innovative ideas, patents and trade marks, in relation to the pharma, technology, cosmetic products and food sectors (among others). Founding partner and longstanding IP specialist, Allan Jarry, is particularly well known for his experience in matters involving start-ups; Olga Moreno is patent division leader; legal department head Magdalena Barros is experienced in trade marks, domain names, copyright and patents, and assisting entrepreneurs with protecting their IP rights; and Paula Mardones, who has a biochemistry background, leads the firm’s overseas patent cases. Junior associate Arantzazu Bermudez acts for both companies and entrepreneurs in industrial property issues, including before Chile’s IP Court.
Practice head(s):
Allan Jarry; Olga Moreno; Magdalena Barros
Testimonials
‘Very proactive, always anticipating all the facts, and keeping the clients informed.‘
‘Timely responses and a great support for clients.‘
Key clients
Universidad de Chile
DUOC
Betterfly
Fast Retailing Co
Etex Group
Innersloth
TotalEnergies
Colgate- Palmolive
Farmacy Beauty
San Antonio Winery
Buses Bio Bio (Turbus group)
Work highlights
- Advising Betterfly on its trade mark portfolio in Latin America and worldwide.
- Assisted Gruma with a nullity process against a third party, which had registered the trade mark “JUANA” for wheat and wheat products.
- Advised Farmacy Beauty throughout the registration process of its trade mark “FARMACY”.
Johansson & Langlois
Highly focused on intellectual and industrial property work, Johansson & Langlois has longstanding experience in advising national and international clients on trade marks, patents, copyright, utility models, and industrial designs and drawings. The practice, which incorporates both lawyers and engineers, is also active in relation to integrated circuits’ layout-designs, domain names, technology transfers, geographical indications, and appellations of origin. It additionally houses specialists in patent, trade mark and copyright infringements. The names to note are trade mark and patent lawyer Andrés Echeverría; Christopher Doxrud, an adviser on trade marks, patents, copyright, advertising, unfair competition and domain names; current president of the Intellectual Property Chilean Association (ACHIPI), Max Montero, who is a trade mark litigation and infringement expert; and patent lawyer and managing partner Felipe Langlois.
Magliona Abogados
Magliona Abogados' seven-strong IP department is able to leverage the firm’s enviable technology credentials. The group’s broad coverage encompasses software licensing, IP transactional issues (including tax), and patent and trade mark litigation. It also advises on negotiations with performance rights organisations, advertising companies’ copyright clearance, IP enforcement campaigns, and IP public policy and government relations. Name partner Claudio Magliona assists with copyright, trade mark strategy, and IP-related deals; and Nicolás Yuraszeck P is a specialist in the software and information and communications technology sectors. At director level, the broad practice of Rodrigo Valenzuela (a 2022 hire from Alessandri & Compañía Abogados), incorporates intellectual and industrial property work; Carlos Araya assists with copyright issues, patent litigation and IP deals; and Karla Cid is experienced in IP, new technologies and telecoms law.
Practice head(s):
Claudio Magliona; Nicolas Yuraszeck P; Rodrigo Valenzuela; Carlos Araya
Testimonials
‘Excellent-quality partners and team.‘
‘Expertise and excellent business vision – well above other law firms.‘
‘Great industry knowledge.‘
‘Always take care of everything – whatever clients need, they solve it quickly.‘
‘Claudio Magliona and Nicolas Yuraszeck- excellence, quality, vision, answers, and availability 24×7.‘
Key clients
Grupo ICB
Smartmining
SQM Mining
Autodesk
Comscore
Falabella Group
Geoblast
Watts
Transportes Prambs
DirecTv
Hexagon
Empresas de Ferrocarriles del Estado
Mercado Libre
Arcor
Coordinador Electrico Nacional
Singular Coffee
Dafiti
Vitamina
Correos Chile|Chile Post Office
Amazon Prime
Netflix
Teck Mining Company
Polychem
COPEC|Empresas Copec
Wados
Compara Online
BSA
Work highlights
- Assists Grupo ICB with its trade mark portfolio and labelling strategy.
- Assisting SQM Mining with implementing legal strategies to protect intangible assets (patents).
- Defended Geoblast against IP rights-related infringement accusations.
Muñoz Jeanneret Alvarez
Advising on the gamut of IP work, boutique legal outfit Muñoz Jeanneret Alvarez is routinely sought out to obtain and preserve industrial property rights. The group’s expertise range from trade marks, patents and utility models, to industrial designs, geographical indications, copyright and domain names. It additionally assists with prosecutions and defence-side oppositions, as well as the monitoring of rights throughout their enforcement period. At name-partner level, the wide-ranging practice of IP specialist Noëlle Jeanneret includes prosecution work and IP portfolio management; and Carmen Paz Alvarez is an expert in trade marks, patents, plant varieties, copyright, and domain names.
Sáenz de Santa María Abogados
Boutique law firm Sáenz de Santa María Abogados has extensive experience in intellectual and industrial property management issues; and the practice is regularly mandated in relation to trade mark, patent and plant variety-related prosecutions and enforcements. The practice also has significant IP litigation credentials. Founding partner Pablo Sáenz de Santa María consistently acts for major national and international trade mark holders, his expertise covering registration and trade mark protection strategies, copyright, patents, utility models, and industrial designs. Providing key support, José Manuel Urenda (a former Alessandri & Compañía Abogados patent attorney) routinely advises clients from the pharma, mining, technology and entertainment sectors.
Villaseca Abogados
The intellectual and industrial property department at Villaseca Abogados fields experts in trade marks, copyright, patents and distinctive signs. The practice is also active in relation to domain names, author and image rights, geographical indications, and appellations of origin. On the enforcement side, the team assists with anti-piracy and illegitimate commerce matters. Eduardo Molina V specialises in utility models, invention patents, industrial designs, and other technology protection matters; Felipe Pavez heads up the firm’s law enforcement and litigation offering; chemical civil engineer Loreto Vera C leads the innovation and plant variety protection department; and Alvaro Arévalo P is copyright leader. Managing partner until 2023, Max Villaseca is currently an external adviser to the firm.
Andes IP
Specialised in innovation strategies, IP and technology transfer, Andes IP's practice assists with the protection and operation of intangible assets, such as trade marks, patents and copyright. The team, which comprises lawyers, engineers, biotechnologists, is co-led by Andrea Lobos, an expert in knowledge transfer contracts, licensing and patent assignments; fellow founding partner Rodrigo Sammut, a trade mark and domain name recovery procedure specialist; and Felipe Burgos, whose practice covers internet regulation, in addition to IP matters. The firm recently incorporated senior associate Fernanda Olmedo, a former in-house lawyer at the Chilean Copyright Society’s Centre for Intellectual Property Studies.
Practice head(s):
Rodrigo Sammut; Andrea Lobos; Felipe Burgos
Testimonials
‘Its people are the firm’s strong point, as well as the experience and professionalism with which they address clients’ issues and requests.‘
‘Always resolves clients’ concerns.‘
‘The team’s best qualities are kindness, teamwork and ability to listen.‘
Key clients
Aintech
Ars Privilegium
Padima
Belltech Technologies
D Young
Santos PI
Work highlights
- Assisted Integrated Technologies with filing a Patent Cooperation Treaty application.
- Advised Catholic University of Chile – HUBTEC CHILE on a licensing matter.
- Assisted Geocontrol with an annulment action.
CMS Carey & Allende
With ‘great knowledge of all aspects of the IP field‘, CMS Carey & Allende‘s IP practice routinely works alongside some of the world’s best-known brands from the banking, technology, media, life sciences, and fast-moving consumer goods sectors. The team advises on trade mark registrations, oppositions and portfolio management, both at global and local levels; and it further specialises in the protection of industrial and intellectual property, in relation to trade marks, patents, copyright and domain names. Other areas of note are litigation, data protection, and counterfeiting and piracy. The IP department is headed by Matías Somarriva, who has ‘extensive experience in the anti-piracy space‘.
Practice head(s):
Matías Somarriva
Testimonials
‘Great follow through and very deep in everything they do.‘
‘They always look for a way to complete the job.‘
‘Great knowledge of all aspects of the IP field.’
‘Commitment, speed, teamwork, and 24/7 availability.‘
‘Great teamwork – they have impressive coordination skills, which makes working with them easy and pleasant.‘
‘Clients receive a personalised relationship from Matías Somarriva, who is always concerned and attentive to details.‘
‘Matías Somarriva is a lawyer with extensive experience in the anti-piracy space – his speed and ability to resolve matters stand out.‘
‘Matías Somarriva is a great collaborator who fosters synergy between the client and the authorities that defend and protect IP rights.’
Key clients
Karün World
ITV Studios
Dune (Brand)
Spartan Motors
CRU International
Kinetik Sport
Conceito Franchising & Licenciamento
Juegos Educativos
Sicom Chile
EFG Bank European Financial Group
Snyder’s-Lance
Sonda
Work highlights
- Advised ITV on an assignment agreement for the “LA DIVIDA COMIDA” and “LA VOZ CHILE” trade marks, which were registered in Chile by Red de Televisión Chilevisión.
- Assisted Dune with an assignment agreement for the “DUNE LONDON” trade mark, which was registered in Chile by Dune Holdings.
- Advised Spartan Motors, which sold a portion of its business to Spartan Fire, on the assignment of trade marks to the new owner.
Dentons Larrain Rencoret
The eight-strong IP practice at Dentons Larrain Rencoret has substantial experience in the protection, exploitation and defence of Chilean and international clients’ IP assets. The Santiago office’s range of specialisms include patents, trade marks, and the maximising of IP benefits through licenses, technology transfers, and IP agreement drafting. Recent work has focused on patent-related technology surveillance; and inventions involving new technologies, such as software, machine learning, big data, and artificial intelligence. Maria Carolina Del Rio, who focuses on the software, retail, food, pharma and entertainment sectors; and Maria Mercedes Londoño, an expert in protecting and defending IP assets, ‘lead the department very well'.
Practice head(s):
Maria Carolina Del Rio; Maria Mercedes Londoño
Testimonials
‘Maria Carolina Del Rio and Maria Mercedes Londoño lead the department very well.‘
‘Maria Carolina Del Rio and Maria Mercedes Londoño have made a name for themselves very quickly.’
‘Maria Carolina Del Rio is always very attentive to the needs of clients – excellent and fast response capabilities from a technical point of view.‘
Key clients
Lemu
Merck & C
Ecometales
Daily Foods
Adama Agricultural Solutions
CBS Viacom
Bertech
BelSport (currently Yáneken)
Ikigai Ventures
MClanahan
Gong Cha
Olarte Moure
Ashley Furniture Industries
Coach IP Holdings
Purple Innovation
Posse Herrera
Fukami Patent Office
Culhane Meadows
Robic
Hibobi
Work highlights
- Advising Lemu on its global strategy to obtain protection for an AI-based innovation, which involves the processing of biometric data.
- Advising Merck & Co on its trade mark filings and prosecutions in South America.
- Assisted EcoMetales with the due diligence for its management of IP issues, which relate to its internal processes and policies.
Flores Acevedo
Flores Acevedo's client base comprises start-ups, entrepreneurs and inventors, as well as SMEs, R&D centres, and business incubators and accelerators. The IP group is frequently mandated by technology and service-sector clients; the firm’s patent practice predominantly focuses on the mining industry; and the trade mark department is sought out by a wide array of clients. Pablo Acevedo heads the firm’s IP and corporate practices; and the practice of fellow name partner José Miguel Flores also includes IP work. The associate to note, Carolina Toro Bragg advises on IP-related transactions and prosecutions.
Practice head(s):
Pablo Acevedo
Key clients
Grupo Lagos
Holding FTJG
Mi Robotic Solutions
Ciencia Pura
Grupo Sable
GoGo Labs
uMov
Polynatural
Saponin Research Center
Clean Water
Buffalo Waffles
Instituto Latinoamericano De Comercio Electronico Econfianza Asociacion Civil
Lobby Control
Madesal
Baqué Latam
Parsec
Jumpitt Labs
Lab4U
Georock
FiiS Global
NTI
Work highlights
- Currently managing all of Holding FTJG’s trade mark portfolio.
- Assisted Mi Robotic Solutions with the filing for 24 national phase applications (based on Patent Cooperation Treaty applications).
- Prepared national phase applications for Safedrill in five different jurisdictions.
Guerrero Olivos
Guerrero Olivos' IP practice covers trade mark and patent prosecution, including cross-border portfolio management issues. The ‘very willing' four-member group also comprises experts in copyright, IP contracts, customs measures, and denomination of origin and geographical indication procedures. The team is also increasingly representing clients in IP litigation, including civil infringement cases and criminal proceedings that involve anti-counterfeiting. The practice is led at associate level by senior Diego Morandé, a trade mark and innovation protection expert, while Alejandra Leiton supports Morandé on several of the firm’s IP mandates.
Practice head(s):
Diego Morandé
Testimonials
‘The Guerrero Olivos legal team maintains a high degree of communication with the client, generating a bond of trust in its performance.‘
‘The team is very willing in relation to various IP aspects.‘
‘The difference between this firm and other firms is very significant.‘
‘Senior associate Diego Morandé maintains fluid communication, both in terms of the status of his cases, and the search for all the information that contributes towards obtaining better results.‘
‘Diego Morandé always gives timely responses and is very concerned about the whole process.‘
Key clients
Exportadora Unifrutti Traders
MEKI
Papel Pintado
Roberto Candia
CAP
Hexagon
Big Company
Rust Oleum
Parfums Christian Dior
Volvo Financial Services
Genial Corp
Vinko
MM Shoes
Dogkas
DyD
Oxxo
Tatiana Camps
Work highlights
- Assisted Chilean steel producer CAP with the registration of trade marks, oppositions against trademark applications and domain name revocation lawsuits.
- Assisted Oxxo with the registration and enforcement of its trade marks in Chile.
- Advised Parfums Christian Dior on the registration of its trade mark, “Perfume Shake” in Chile.
Larrain y Asociados Abogados
Larrain y Asociados Abogados‘'IP practice ‘provides advice that adds value'. The four-member group specialises in industrial property matters, copyright, and plant varieties; and it has particular expertise in licensing contracts and other music industry agreements. The department is also noted for its fusion of constitutional law and IP matters; and its experience extends to litigation before the Chilean Trademark Office, the Industrial Property Court, and the Supreme Court, as well as domain name issues. The group is co-led by experienced partner José Pedro Baraona, who also heads the firm’s real estate practice; and senior associate Sebastián Prieto, who is ‘highlighted for his knowledge of IP legislation'.
Practice head(s):
José Pedro Baraona; Sebastián Prieto
Testimonials
‘IP lawyers with knowledge of clients’ business and the markets in which they operate – provides advice that adds value, where effective protection of designs, products and trade marks is achieved.‘
‘Sebastián Prieto stands out for the speed and agility with which he resolves queries, and how he manages the requests that are made of him.‘
‘Sebastián Prieto is highlighted for his knowledge of IP legislation and how the different procedures associated with IP matters work.‘
Key clients
Watt’s
Universal Music
Dr August Wolff Gmbh & Co
Compañía Papelera Del Pacífico
Ab Tetra Pak
McCain Foods
Aloha Beauty
Alberto Aspesi & Co
Viña Santa Carolina
Agricola Cameron
Meridiam
Sun World International
Recupac
Compañías CIC
Inmobiliaria Parques Y Jardines
NCH Hoteles
Pelican Products
Stepan Company
Fundacion Minera Escondida
Felipe Pini Chacon
Work highlights
- Advising Universal Music on the preparation of contracts with both Chilean and international artists.
- Advises AB Tetra Pack on all its IP issues in Chile.
- Advises Viña Santa Carolina on its IP matters.
Mühlenbrok & Kühner
Incorporated in 2015, Mühlenbrok & Kühner‘s recent track record includes advising on over 4,000 trade marks, along with the litigation of several civil and criminal matters (and arbitrations). The 21-strong practice covers the prosecution of trade marks, contentious patent issues, IP transactions, designs, and copyright (and related rights). Founding partner Alexander Mühlenbrock assists with the protection of intangible assets in Chile and IP-related disputes; and associate Daniel Suárez is a trial lawyer, who focuses on the registration of trade marks, invention patents, utility models, and appeals before the Industrial Property Court of Chile.
Practice head(s):
Alexander Mühlenbrock
Testimonials
‘Responsible, serious and proactive professionals.‘
SCR Abogados
SCR Abogados' IP practice routinely handles copyright, trade mark, licensing and patent matters. Typical workloads range from trade mark filings and prosecutions, to domain name disputes, patent prosecution, plant breeder’s rights registrations, and trade secret protection and enforcement issues. The team also assists with IP-related transactional work, regulatory compliance, and the advertising of regulated products. Heading the group, Juan Francisco Reyes (a former Baker McKenzie Chile IP and healthcare practices’ head) is an expert in pharmaceutical and food products, as well as cosmetics and medical devices.
Practice head(s):
Juan Francisco Reyes
Testimonials
‘Their transparency and concern for the interests and needs of his clients is superior. The degree of probity with which they carry out their activity is remarkable and their expertise in corporate matters and intellectual property should be noted.‘
‘Juan Francisco is a prominent lawyer with a notable track record and vast experience in corporate affairs and intellectual property management. We also highlight his cordiality in the treatment and willingness to go beyond what is expected.‘
Key clients
Laboratorios Andromaco
Pacific Mining Parts Chile
Indimin
Dr. Reddy’s Laboratories Chile
Eurofins Chile Testing
Activo Austral
Neo Urbe
Integral Chile
OSA
Flow
Llawken
Work highlights
- Acted for Pacific Mining Parts Chile in judicial proceedings involving the alleged infringement of a competitor’s patent.
- Assisted Flow with trade mark searches and registrations in several Latin American countries.
- Represented Dr. Reddy’s in a pre-trial evidence proceeding.