‘Tremendously creative and passionate about their work‘, the 35-strong group at full-service firm Carey is a market leader for intellectual property (IP) prosecution in Chile, with responsibility for over 5,000 patents and approximately 28,000 trade marks; it also houses specialists in the prosecution and litigation of trade marks, patents and industrial designs, geographical indications, designations of origin, plant varieties, and domain names. Additional areas of strength range from regulatory matters (pharmaceuticals), copyright, anti-counterfeiting and licensing to franchising, labelling, intangible asset valuation, IP management, and unfair competition. The co-heads of the firm’s IP and IT group are Guillermo Carey (also co-head of the life sciences group) and head of the firm’s anti-counterfeiting practice Francisco Carey, who are ‘both appreciated for their experience, reliability, professionalism, dedication and collaboration‘. Counsel Fernando García has vast experience in acting for pharmaceuticals-related companies on the protection and defence of IP assets, but former counsel Paulina Silva departed the firm in December 2020.
Intellectual property in Chile
Guillermo Carey; Francisco Carey; Fernando García
‘This team is unique because it brings together very diverse capabilities and works with extraordinary cohesion, empowerment and co-ordination.’
‘They pay great attention to details and do not rest until they find the most precise solutions to our needs, so as to protect the innovations we develop; and they are tremendously creative and passionate about their work.’
‘In legal actions they have proven to be very effective – compared to other firms, I place them in the top 5%.’
‘In addition to being very good technically, Carey has an excellent administrative service, where billing is issued clearly, transparently and on time. This differs widely from the rest of the firms where this issue has always been a problem.’
‘Solid solutions are put into practice with great vision.’
‘To serve a manufacturing company like ours, this team has developed specific technical capabilities to be a functional counterpart to our engineering and business team. They also have business insight which makes them very effective in patenting strategies.’
‘Francisco Carey and Guillermo Carey are both appreciated for their experience, reliability, professionalism, dedication and collaboration.’
‘Guillermo Carey stands out for his great availability and involvement in all the matters that we encounter with the IP team – what is unique about Guillermo is his ability to generate conversations and analysis that lead us to think outside the box, and come up with solutions and business ideas that we had never considered before. His viewpoints are always broad, comprehensive, multifaceted and with business sense, and his great experience translates into excellent insights and the ability to anticipate.’
Societés des Produits Nestlé
Universidad Católica de Chile
- Assisted Stokely-Van Camp with the filing of a discovery measure against a competitor, which concerned the unauthorised use of an identical sign in the same market segment (isotonic drinks).
- Assisted Fosfoquim, a Chilean chemical company, with prosecuting a significant patent application.
- Assisted Skechers US with its successful cancellation action against trade marks “OXDANS” and “I-CAX”, which were registered in class 25.
Sargent & Krahn
With ‘vast experience and enormous knowledge‘, Sargent & Krahn‘s 21-strong team handles a sizeable portfolio of trade marks and patents in Chile, consistently handling prosecution and contentious issues. The firm’s life sciences and pharmaceutical teams recently experienced an increase in their IP-related workload, while the anti-counterfeiting section is regularly sought out to work on the seizure and destruction of counterfeit products before Customs, alongside IP-specialised police brigades. The practice fields several experienced practitioners, including trade mark practice head Alfredo Montaner; patent group leader Juan Pablo Egaña (‘deep knowledge of industrial and intellectual property issues‘); and ‘true expert‘ Rodrigo Lavados, who heads the copyright practice. Also integral to the practice are industrial property litigation specialist Eduardo Lobos (partner as of January 2020); and Cristián Barros, an IP law and pharmaceutical regulation specialist, who was elevated to the partnership in January 2021. At senior associate level, Pablo Cariola leads the IP infringement department, while associate Felipe Fernández also advises on intellectual and industrial property matters.
Alfredo Montaner; Juan Pablo Egaña; Rodrigo Lavados; Eduardo Lobos; Cristián Barros
‘The legal team handling our trade mark and IP matters is a solid one, with vast experience and enormous knowledge, which makes their answers and advice accurate and impeccable.’
‘They have quick response capabilities and a deep understanding of our business, which sets them apart from the rest of their competitors.’
‘It is appreciated that they are always available and act quickly; these are lawyers who are concerned about their client and always available to help, and the advice they provide is concise and practical, yet very thorough.’
‘Since they started representing us in Chile, we have obtained great results thanks to their hard work; they are extremely responsive, as well as being both proactive and comprehensive when communicating the status of our matters. In addition, they provide very clear, concise and practical advice, while keeping in mind our ultimate goal and budget concerns.’
‘Juan Pablo Egaña is an experienced lawyer, with deep knowledge of industrial and intellectual property issues, and an enormous understanding of our company’s business; he also leads his team in an impeccable manner.’
‘Cristián Barros, is a highly prepared lawyer, with deep knowledge in this area – he stands out for his tremendous availability and excellent ideas when creating agreements and strategies.’
‘Rodrigo Lavados is a true expert.’
‘Eduardo Lobos is very impressive.’
Johnson & Johnson
Viña Concha y Toro
- Successfully acted for Viña Concha y Toro before the Supreme Court in overcoming previous rejections of the Industrial Property Court and the Industrial Property Ministry of Economy of the trade mark application for “CLOS DE PIRQUE”.
- Successfully acted for Dow Agrosciences in an appeal before the Industrial Property Court, overturning a previous rejection by the National Institute of Industrial Property Ministry of Economy.
- Assisted Acceso TV with reaching an agreement with ATN, which represents directors and scriptwriters in relation to IP rights.
Providing ‘comprehensive advice and expertise’, Albagli Zaliasnik‘s IP department is particularly well known for its expertise in anti-counterfeiting, complex IP litigation, and patents and trade mark prosecution, as well as advertising law. In May 2020, IP group director Eugenio Gormáz, a trade mark, copyright and patent specialist, was promoted to partner; nevertheless, senior partner and civil litigation and arbitration head, Ariela Agosin, also maintains a strong IP group presence. Additional practitioners integral to the group include: IT, privacy and media practice director, Oscar Molina, who assists with the protection and defence of IP assets; and three experienced associates - namely Andrea Céspedes, and litigation-and-contracts experts Juan Pablo Zamora and Antonia Nudman.
Eugenio Gormáz; Oscar Molina
‘Prompt responses with an excellent understanding of concepts, along with comprehensive advice and expertise.’
‘Ariela Agosin has brought the commercial awareness of the team members up to international levels – it is not easy to find firms that can provide such a level of service in this region.’
‘Eugenio Gormáz is excellent in his work, quick in his answers and very knowledgeable about IP matters.’
‘We like senior associate Oscar Molina and his team because of the swift responses and valid content.’
Mapuche Economic Confederation
Observatorio Digital de Antpirateria
- Assisted Pur Equipamentos Industriais with a request for the restoration of patent rights.
- Assisted Mapuche Economic Federation with a certification mark procedure for the “SELLO MAPUCHE” trade mark.
- Advising Huawei Technologies on trade mark matters in Chile.
Alessandri & Compañía Abogados
Alessandri & Compañía Abogados‘ sizeable patent and innovation department has an enviable name in the market for its advice to international and domestic clients on the protection and enforcement of IP assets; clients additionally benefit from the department’s consistent collaboration with the firm’s in-house tax, labour, corporate, contract and litigation teams. Managing partner of the firm’s technology and IP departments, Rodrigo Velasco A specialises in licences, contracts, tax aspects and litigation, in relation to domain names, trade marks, patents and data protection; Santiago Ortúzar manages national and multinational patent portfolios, as well as IP-related corporate matters; and senior associate Carla Pacheco assists with the registration and litigation of trade marks and domain names. Former senior associate (and patent head) Francesca Rodríguez left the firm in September 2020.
Rodrigo Velasco A; Santiago Ortúzar
‘Efficient management of our IP portfolio with high levels of professionalism.’
‘Stands out from other firms for its efficiency and experience in international IP procedures and litigation.’
3M Innovative Properties Company
Inter IKEA Systems
Bacardi & Company
Fifty-Six Hope Road Music
- Assisted Golden Omega with the evaluation of IP rights, when it took over a Norwegian start-up (Omegatri).
- Assisted 3m Innovative Properties Company with a complex patent matter.
- Assisted Codelco with filing a cancellation action against a patent.
‘Very clear and efficient when compared to other teams’, Claro & Cia.’s six-strong group covers the full range of IP advice, from patent and trade mark registration, prosecution and litigation, to the IP aspects of M&A and corporate transactions; it also assists with niche areas such as data protection, labelling regulations and IP-related deals. The ‘very effective’ Felipe Claro (over 25 years’ experience advising national and multinational clients on complex and novel IP matters) heads the department, which also showcases counsel and privacy and IP specialist Paulina Bardón, and senior associate Claus Krebs, who is highly active in trade mark and complex patent matters. Associates Mahish Sadarangani (trade marks, copyright and internet issues), patent practice manager Trinidad Rojas and Bryan Kernitsky (entire range of IP matters) are also experienced team members.
‘The IP team led by Felipe Claro is very efficient and organised.’
‘They cover both trade marks and patents very well, and always respond on time to the queries and needs that clients have.’
‘Great skill in resolving contentious issues, and great for the promptness with which they respond to any enquiry.’
‘Their IP management is extremely efficient, they answer any enquiry very quickly, and are very clear and efficient when compared to other teams – they stand out for their professionalism and excellence.’
‘Felipe Claro’s leadership is an outstanding characteristic of the team and explains its good performance.’
‘Felipe Claro is very effective and the strategies he proposes work in practice.’
‘Associate Bryan Kernitsky has grown as a professional, and assisted us with disputes with third parties in a very satisfactory way.’
Joy Global Companies
The A2 Milk Company
The Coca-Cola Company
The Goodyear Tire & Rubber Company
Viña Santa Rita
- Assisted The Coca-Cola Company with registration of the mark “COCA-COLA ENERGY”.
- Acted for Cordeiro y Cía in the prosecution and defence in Chile of the “VERDEFLOR” mark against Chilean company D y B Chile.
- Assisted Francisca Alegría with copyright licensing and contract negotiations.
Founded in 1945, Johansson & Langlois has longstanding experience in industrial and intellectual property matters. The practice fields specialists in trade marks, patents, utility models and industrial designs, along with copyright, domain names, geographical indications, appellations of origin and technology transfer; clients additionally benefit from the practice’s access to the firm’s in-house engineers, who regularly assist with the prosecution and obtaining of patents. Andrés Echeverría (trade marks, patents and criminal law); trade mark, litigation and infringements expert Max Montero; Christopher Doxrud (trade marks, patents, copyright, advertising, unfair competition and domain names); and managing partner and patent specialist Felipe Langlois, are all highly rated for their IP expertise.
With one of the most recognised multi-disciplinary teams on the market, IP firm Silva has widely respected expertise in trade marks, patents, copyright, enforcement and litigation, and transactional IP; it also fields experts in entertainment, media and sports, as well as privacy and data protection cases. Founding partner Juan Pablo Silva has represented the IP rights of multinational companies all over the world, particularly in relation to the financial services, retail, telecoms, media and sports sectors for over 30 years; Francisco Silva handles a large volume of major international trade mark and patent cases; and in addition to managing the firm’s IT group, Andrés Grunewaldt oversees the enforcement and litigation department. Additional partner-level support is provided by Rodrigo León, who co-ordinates filings in multiple countries, particularly for mining-industry companies, while associate Sebastián Alvarado is patents director.
Juan Pablo Silva; Francisco Silva
‘The personalisation of care and detailed knowledge of what we require as clients differentiates them from other firms.’
‘An excellent team that is orderly, and with conflict resolution capacity and high levels of availability.’
‘Silva’s team stands out for its personalised attention to clients – highly qualified professionals who provide advice that leads to practical results.’
‘High levels of commitment to clients; this is a team of high-level lawyers who are very prominent in their area of expertise.’
‘Juan Pablo Silva and Rodrigo León stand out.’
‘Juan Pablo Silva solves problems efficiently and handles conflicts successfully.’
‘Andrés Grunewaldt is a highly specialised professional, with great knowledge and management of this area.’
‘Associate Sebastián Alvarado knows our patent in detail – he also advises us on our global patenting strategy and knows what we require as a start-up.’
Turner Broadcasting System
National Football League
Oceana (Lucent Biosciences)
- Successfully represented Forus and Billabong against a complaint filed by the National Consumer Office before the National Council of Self-Regulated Advertising, based on advertising that allegedly denigrates the image of a woman.
- Successfully acted for Sparta’s sporting goods brand (Bluefit) in Bluefit’s attempt to register its trade mark in Chile.
- Defended Downlight’s legal representative against a civil action, which was filed by the patent owner of a registration that protects the design of lighting used in streets and parks.
Baker McKenzie Chile
Baker McKenzie Chile‘s ‘tremendous’ team is led by partner Valentina Venturelli, a former Sargent & Krahn associate, who ‘provides excellent advice’, and is a trade mark and patent prosecution specialist. The practice advises across various industries, including pharmaceuticals, fashion, manufacturing, and media and entertainment; its diverse practice covers trade marks, domain names, plant varieties, copyright and patent law, including prosecution, enforcement, regulatory and transactional assistance. Clients also appreciate the firm’s market-leading regional and global IP network, which covers over 47 jurisdictions. Senior associate Sebastián Dorena’s expertise ranges from IP matters to cybersecurity, while associate Carlos Lazcano also supports the group’s IP work.
‘We are very satisfied with the professionalism, treatment and experience of the lawyers we work with – we feel very confident about making decisions based on their advice.’
‘They quickly achieved our objectives.’
‘A tremendous team, led by Valentina Venturelli, who always gives us excellent attention, reporting the progress of cases both to our legal management in Chile and directly to our headquarters.’
‘Valentina Venturelli works very hard, provides excellent advice, and is always available to discuss and modify the client-tailored strategies, so as to obtain the best results.’
Nissan Kabushiki Kaisha
- Assisted Abercrombie & Fitch with the registration of an important mark, appealing against a previous opposition by proving that the marks at issue were distinguishable.
- Assisted SAP with achieving class-35 registration of its mark, which was on appeal following rejection by the Trademark Office and third party opposition.
- Assisted Partners In Leadership IP with achieving registration of its mark, which was on appeal following rejection by the Trademark Office and third party opposition.
‘Technically skilled and very responsive’, specialised IP practice Covarrubias fields a seven-strong department that covers major patent industries in Chile, such as chemicals, technology, food and drink, pharmaceuticals and life sciences, along with agriculture, biotechnology and retail. The practice has also developed specialisms in regulatory issues and plant varieties, as well as in growing areas such as energy innovations, AI and robotics. The broad practice of name partner Arturo Covarrubias includes industrial and intellectual protection strategies, and copyright; and at associate level, biochemist Matías Valenzuela is patent department head, Sofía Covarrubias leads the international trade mark practice, and Juan José Prieto is a key attorney in the national trade mark and internet domain name group.
Arturo Covarrubias; Sofía Covarrubias; Juan José Prieto; Matías Valenzuela
‘Rapid responses to all enquiries, with the ability to anticipate potential obstacles to obtaining registration or recognition of rights.’
‘Great for the alternatives they offer and the adaptability they show to the billing and payment process.’
‘The Covarrubias patent team is at an excellent technical level. What differentiates them is the delivery of very good quality documents at a reasonable cost to clients – and that delivery is always within the agreed deadlines.’
‘The answers are fast, adequate and efficient, and the treatment of clients is excellent.’
‘The Covarrubias team is unique because they are technically skilled and very responsive, thus saving us time and improving our own efficiency.’
‘Associate Sofía Covarrubias delivers precise and effective solutions.’
‘Arturo Covarrubias always shows much-appreciated flexibility.’
‘Arturo Covarrubias and biochemist Matías Valenzuela are both top-level professionals.’
Amvac Hong Kong
Arama Natural Products Distribuidora
Blue Box Opco
Iron Mountain Incorporated
Truly Nolen International
Aguilar y Cia
Westrock (RTS Packaging)
Softys (CMPC Tissue)
Sociedad Punta del Cobre
- Assisted Westrock with its appeal at the Industrial Property Court against the Patent Office’s rejection of a patent application, which concerned a partition to separate bottles inside a box (so they remain undamaged during transport).
- The firm assisted Hyundai Motor Company with the protection of the trade mark “GENESIS” logo in 23 classes in the Chilean market.
- Assisted CONMEBOL (The South American Football Confederation) with filing several trade mark and slogan applications which are associated with Chile’s 2020 Copa Libertadores de America (men’s soccer tournament in South America).
‘Devoted to its work‘, IP boutique firm Dellafiori Abogados has over 35 years’ experience in corporate IP, trade marks, patents, domain names, industrial designs and utility models. Other key areas include copyright, trade secrets, new technologies and data protection, with the firm’s sector expertise covering food, wine, agriculture, technology and fashion. Founding partner Enrique Dellafiori has over 35 years’ IP advisory and litigation experience; he is supported by younger partners Mauro Dellafiori (trade mark and patent law specialist) and Franco Dellafiori, who is increasingly developing a trade mark practice. The specialist IP associate to note is Cristián Carril, while former international department head Daniel de Santiago departed for an in-house positon in May 2020.
Enrique Dellafiori; Mauro Dellafiori; Franco Dellafiori
‘High-quality advice and service, including direct communication with the attorneys in charge.’
‘Great for knowledge, communication and experience.’
‘Dellafiori Abogados has a team that at all times demonstrates knowledge of the matter in hand, and their communications are clear and their responses quick.’
‘It is a very strong team, has extensive knowledge in the field, and provides comprehensive assistance to clients.’
‘They stand out for their efficiency and quality of work.’
‘Devoted to its work with quick responses.’
‘Great interpersonal relationships combined with knowledge is the big difference!’
‘Mauro Dellafiori is a young, but experienced lawyer, with a lot of IP expertise.’
Zhejiang Geely Holding Group
Universidad Gabriela Mistral
Asociación Nacional de Cooperativas
Fifty-Six Hope Road Music
Viña Del Pedregal
- Advised Empresas Carozzi on the acquisition of the trade mark “BRESLER” (previously owned by Unilever).
- Advised Laboratorio Maver on the acquisition of trade marks Cotibin, Predual, Povin and Pancrit from Andrómaco Research (subsidiary of Grünenthal).
- Acted for Colun in a trade mark opposition matter that is currently before the Supreme Court.
Specialised IP boutique Jarry IP acts for Chilean business aswell as academic organisations from over 15 countries, and enjoys a client roster that spans the technology, cosmetic products, oil and gas, construction, food and pharmaceuticals sectors; the five-strong team is experienced in creating, processing, procuring and defending IP rights, particularly copyright, trade marks and innovative patents. Founding partner Allan Jarry has over 20 years’ experience in Chile and Latin America-related IP matters; patent division head Olga Moreno has been a permanent World Intellectual Property Organisation (WIPO) consultant since 2008; and the firm’s youngest partner, Magdalena Barros, ‘delivers very good advice’. At associate level, senior Javiera Diaz advises on IP and corporate matters, while junior Arantzazu Bermudez’s experience includes industrial property issues.
Allan Jarry; Olga Moreno; Magdalena Barros
‘A team of professionals who are all very committed and highly qualified, with previous careers that demonstrate great experience in the subjects they handle.’
‘Fast delivery and extraordinary commitment to resolving clients’ doubts and problems.’
‘Constant concern for the client and how they can help. Compared to other larger dispatch teams, this IP team is far superior, due to its effectiveness and commitment to the client.’
‘The price/quality ratio is very competitive – you get a first-class service at a very reasonable rate, and the human qualities of its members are outstanding.’
‘A dynamic and cohesive team, and they have always answered my questions promptly.’
‘Allan Jarry’s personalised attention is at the top level.’
‘Magdalena Barros plays a strong role and is an extraordinary professional.’
‘Magdalena Barros is outstanding, and delivers very good advice when making important decisions.‘
Dutch Passion Holding
Kelly Slater Wave Company
American Licorice Company
ShenZhen Wuzhou KOMC Electronics Co
- Assisting Total with its Latin American and Caribbean trade mark filings, as well as with prosecutions involving the “TOTAL” trade mark.
- Assisting Blush-Bar with IP matters, including its trade mark expansion and marketing strategies.
- Advising ETEX Group on IP matters, including its trade mark portfolio.
Housing a seven-member IP team, Magliona Abogados‘ IP practice is able to leverage the firm’s expertise in technology matters; representative work includes patent and trade mark litigation, software licensing, IP transactions (including taxation), and negotiations with performance rights organisations. The group also advises on IP public policy, copyright clearance for advertising companies and IP enforcement campaigns. The principal advisers are Nicolás Yuraszeck (IP, patent, trade marks, domain names and licensing); senior partner Claudio Magliona, whose broad practice includes intellectual and industrial property matters; director Carlos Araya (trade marks, patents, licences and IP lawsuits); and IP litigation attorney Ramon Rojas.
Nicolas Yuraszeck; Claudio Magliona; Carlos Araya
‘Broad expertise, including the IP aspects of AI.’
‘Claudio Magliona and director Carlos Araya have substantial knowledge of IP matters.’
Chile Post Office
Coordinador Electrico Nacional
- Assisted Terramar with patent protection and enforcement issues.
- Assisted Smartmining with the protection and enforcement of trade marks and domain sites.
- Assisted SQM Mining Company with legal strategies to protect intangible assets.
Muñoz Jeanneret Alvarez
‘A reference firm in Chile for intellectual and industrial property expertise’, IP law firm Muñoz Jeanneret Alvarez fields a four-member practice that consistently advises on the obtaining, protection, enforcement and management of IP assets. Representative specialisms include trade marks, patents, utility models, industrial designs, copyright and domain names, along with due diligence procedures and contractual IP-related issues. Name partners Noëlle Jeanneret (elected as member of the board at The Chilean Intellectual Property Association for 2020-2022), who advises both domestic and foreign clients on IP matters; and ‘sharp and business-oriented‘ Carmen Paz Alvarez (trade marks, patents, plant varieties, copyrights, appellations of origin, geographic indications and domain names), are the key contacts.
Noëlle Jeanneret; Carmen Paz Alvarez
‘The firm comprises a team of highly capable partners, who are very responsive to clients’ needs.’
‘What we appreciate about Muñoz Jeanneret Alvarez is their response times and specialised attention to all IP issues.’
‘Due to the size of the firm, we have constant interaction with all the team members and they all know, in a general way, the affairs of our clients in their jurisdiction.’
‘The knowledge they have, and the speed with which they respond, stand out against other firms.’
‘Its greatest qualities are the lawyers’ excellent knowledge of IP law, the assertiveness of their recommendations and good legal judgement – a reference firm in Chile for intellectual and industrial property expertise.’
‘The MJA team is solid and experienced.’
‘Noëlle Jeanneret has extensive knowledge of trade marks and client portfolio management, and her opinions and recommendations are profound and practical.’
‘Carmen Paz Alvarez has excellent availability, and she is sharp and business oriented.’
Alpina Productos Alimenticios
Micro Mobility Systems
Sociedad Crea3d Ingenieria
Vorwerk Y Cia
- Acted for Sercotec in relation to the protection of collective and certification marks, as well as geographical indications for agricultural products.
- Assisted Caja de Compensación de Asingacion Familiar La Araucana with the elaboration of a comprehensive handbook, which explained trade mark and copyright law, for internal use.
- Represented Enrique Vasquez in relation to favourable decisions at the IP Appeal Court for trade mark “WORKINGHOLIDAY.CL”.
Founded in 1993, Porzio Ríos García has substantial experience in assisting with obtaining IP rights; registering trade marks, patents, internet domain names and plant breeder rights; and the defence, protection and enforcement of IP rights. Additional areas of expertise range from copyright to intellectual and industrial property-related contracts, protecting new information technologies, anti-counterfeiting, and data privacy. The group of principal practitioners consists of founding partner Marino Porzio (patents, trade marks, plant varieties, copyright and unfair competition); former president of the Chilean Association of Industrial Property (ACHIPI) Cristóbal Porzio; and Marcelo Correa, who advises on commercial brands, patents, technology transfer and copyright.
Sáenz de Santa María Abogados
Sáenz de Santa María Abogados’ practice -founded in 2016- focuses on IP rights-related advisory work, prosecution and enforcement, with its client base covering the education, food, advertising, product manufacturing, apparel and IT sectors. The firm’s trade mark and patents teams have been particularly active, recently, and in 2020 the firm launched a new plant variety-focused sub-practice. The department’s principal advisers are founding partner and intellectual and industrial property expert, Pablo Sáenz de Santa María; and experienced partner José Manuel Urenda, a patent and trade mark prosecution specialist, and former Alessandri & Compañía Abogados patent attorney.
Pablo Sáenz de Santa María; José Manuel Urenda
‘The lawyers are agile; they are also proactive, rigorous and do a well-structured job.’
‘They are able to resolve the problems that arise on a day-to-day basis.’
‘The lawyers stand out for their availability, ability and correct IP knowledge; and being advised by the partners themselves makes us feel much more confident that our requirements are being met by real experts.’
‘Professional lawyers who provide a very good service and are always on time.’
‘They know the IP world very well – compares favourably.’
‘Great for the personalised relationship, proactivity and flexibility in fees.’
Osiris Plants Management
Silva Y Jimenez
Sociedad Agricola Y Comercial Fitological
Grupo Rock Chile
Sociedad Comercial Didácticos Chile
- Assisted Osiris Plants Management with trade marks registrations.
- Advised Silva Y Jimenez in relation to the publishing of a new book.
- Assisted Freemet Comercial with IP asset protection matters.
Villaseca Abogados houses a specialist department in trade marks, copyright, patents and distinctive signs. Examples of key work areas also include image rights, domain names, geographic indications, appellations of origin and the enforcement of IP rights. Among the group’s highly regarded practitioners are managing partner Max Villaseca, who heads the firm’s internet domain and trade mark practices; Felipe Pavez (law enforcement and litigation leader); innovation and plant varieties practice head Loreto Vera C; current director of the Chilean Association of Intellectual Property Eduardo Molina V; and copyright leader Alvaro Arévalo P. The firm's general counsel, Bernardo Serrano, has extensive industrial and intellectual property experience.
Beuchat, Barros & Pfenniger
Established in 1964, Beuchat, Barros & Pfenniger advises on a broad range of IP work, ranging from obtaining and protecting patents; copyright; and defending and prosecuting trade marks, to industrial designs, plant variety-related matters and obtaining health product registrations. Additional areas of expertise include IT and unfair competition-related IP issues, licensing and distribution contracts, and anti-counterfeiting matters (including the seizure of goods). The partners to note are Andrés Melossi Jiménez, Luis Felipe Vinagre Larraín and Rodrigo Puchi Zurita.
‘Outstanding in planning and executing strategies for complex cases’, CMS Carey & Allende’s industrial and intellectual property practice consistently works with global brands from the banking, technology, media, life sciences and fast-moving consumer goods sectors on IP matters; its experience covers trade marks, patents, copyright and domain names, along with counterfeiting and piracy, litigation and data protection. With approximately 20 years’ IP experience, Matías Somarriva (trade marks, patents, industrial designs, litigation, copyright and unfair competition) leads the IP group. Former senior associate Paz Marambio left the firm in 2020 and has since moved in house at BAT.
‘Outstanding in planning and executing strategies for complex cases.’
‘Depth of knowledge and the ability to design strategies make CMS Carey & Allende a leading firm.’
‘Their knowledge of the law is very good, and the team led by Matías Somarriva works very well and with impressive precision.’
‘Matías Somarriva is great for his in-depth knowledge and experience, his versatility when litigating complex cases, and the ability to adapt to unforeseen circumstances arising from litigation.’
Khiron Life Sciences Corp
- Assisted Inversiones Renacer with replying to a cease and desist letter from Red de Clínicas Regionales, which concerned the use of the trade mark CLÍNICA ANDES SALUD CONCEPCIÓN.
- Assisted Khiron Life Sciences Corp with both filing an application for trade mark ZERENIA and responding to the opposition requesting its rejection.
- Assisted Quintec Distribucion with filing a response to BMW’s oppositions and action, which involved trade marks PLUG & PLAY and PLUG AND PLAY.
Dentons Larrain Rencoret
Dentons Larrain Rencoret‘s ‘dedicated‘ seven-strong team advises Chilean and international companies on building, protecting, exploiting and defending their IP assets in Chile, and other Latin America and Caribbean countries; such representation includes maximising benefits through licences, technology transfers and agreements. Being part of the Dentons global network, the Santiago office also assists local clients with their expansion plans in Latin America, the US, Europe and Asia. The practice is co-led by Maria Carolina Del Rio and Maria Mercedes Londoño, who were both hired in 2019 from Iberian IP firm Clarke, Modet & Co's Chile office, where Del Rio was CEO for 19 years and Londoño led the technical and legal team for over a decade.
Maria Carolina Del Rio; Maria Mercedes Londoño
‘The team at Dentons Larrain Rencoret is very dedicated and thorough with regard to the responsibilities they take on.’
‘Unique for their awareness of the client’s needs.’
‘The team is very responsive and professional.’
‘The team is always attentive to the requirements of the client – it is also highly productive and very efficient.’
‘Proactive, and with clarity to their strategies.’
‘Maria Carolina Del Rio and Maria Mercedes Londoño are both very professional, dedicated, and always striving for the best possible outcome for the client.’
‘Maria Carolina Del Rio listens carefully to clients’ needs, and I appreciate her professional and open approach.’
Merck & Co
Adama Agricultural Solutions
- Advises Merck & Co on the protection of its intangible assets, predominantly trade marks.
- Assisting Adama Agricultural Solutions with its IP strategy, including which trade marks should be registered.
- Advised theCentre for Scientific Studies (CECs) on state-of-the art searches and drafting the patent for Caligus.
The former Flores y Asociados Abogados recently changed its name to Flores Acevedo to reflect the significance of the Santiago office’s work, led by founding partner and corporate and IP specialist Pablo Acevedo. The six-member IP department advises start-ups, entrepreneurs, inventors, corproates, and small and medium-sized enterprises, along with research and development centres across the gamut of IP matters; the patent practice predominantly focuses on the mining sector; while the trade mark group has a broad industry focus. Carolina Toro Bragg joined as associate in March 2020 from Innovarte Consultores (a non-profit legal entity).
‘The firm’s IP team stands out for its multidimensional vision, which aligns with clients’ needs.’
‘Solid and unquestionable knowledge of this area, especially with regard to start-ups, which gives them a great advantage over competitors.’
‘The associates and partners are solid and quality professionals.’
‘The creative vision of the associates is a huge plus and what every start-up business needs in order to prosper.’
‘We filed our invention patent in Chile due to the level of confidence we had in the firm’s partners and associates. To date, the service provided by this firm has not only addressed the administrative and legal aspects, but also provided advice on the strategy of the whole process they are helping us with.’
‘The availability of the legal team is an invaluable asset and very well received by our company.’
‘Pablo Acevedo is great for IP strategies.’
‘Associate Carolina Toro Bragg is always attentive to our requests.’
Compañía Puerto de Coronel
Pegas con Sentido
Mi Robotic Solutions
- Advised Mi Robotic Solutions on the filing of Patent Cooperation Treaty patent applications.
- Advised FiiS Global on the correct assignment of IP rights and data management, in relation to a climate change digital festival (promoted and funded by the EU).
- Advised Fundación Chile on developing its IP strategy for mine-tailings management tools (developed within a conglomerate of partners), so as to assess the assignment of rights to each rights holder.
Key areas of IP work for the four-member group at Guerrero Olivos include trade mark and patent prosecution, IP litigation and contracts, technology transfers, data privacy, licensing agreements, and criminal proceeding-related anti-counterfeiting matters; it also provides day-to-day corporate IP support. Senior associate Diego Morandé leads the IP department, specialising in trade marks, patents and copyright, strategic prosecution and litigation planning, enforcement and anti-counterfeiting; he also handles international trade mark portfolio management, domain name disputes and new-technology matters. Associate Alejandra Leiton is a key member of the IP, TMT, data privacy, compliance and competition departments.
‘Guerrero Olivos has given us very good advice and sufficiently protected us.’
‘Excellent follow-up to the matters entrusted or referred, with direct communication with the lawyer in charge of the practice.’
‘The team is very good, efficient, and up to date in this specialised area.’
‘Senior associate Diego Morandé is very agile, with very good availability and technical contributions.’
‘Diego Morandé stands out – he is a very diligent lawyer who assumes with great responsibility every matter that is entrusted to him. He does not come off the matter at any time, and is always very attentive to any requirement the client might have.’
‘Solid preparation and good client care from both Diego Morandé and Alejandra Leiton.’
Exportadora Unifrutti Traders
Comercial e Industrial Oxxo
Diseño Papel Pintado
Compañía Minera del Pacífico
The Kraft Heinz Company
Indura (Air Products)
- Represented Exportadora Unifrutti Traders in an international trade mark infringement and counterfeiting matter.
- Successfully represented multinational Teka Group in a local domain name dispute.
- Advised The Kraft Heinz Company on the IP aspects of international food labelling compliance issues.
Larrain y Asociados Abogados‘ IP department is characterised by its specialisations in industrial property matters, plant varieties and copyright, along with particular expertise in music industry-related agreements; it also assists with issues that combine both constitutional law and IP, as well as litigation and domain name disputes. José Pedro Baraona is current team leader, following Pablo Ruiz-Tagle’s temporary departure to serve as Dean of the University of Chile’s School of Law; active senior associate Sebastián Prieto is an intellectual and industrial property expert with specialist knowledge regarding new technologies.
José Pedro Baraona; Sebastián Prieto
‘Professionalism and good availability, with knowledge of the subject and the ability to provide answers to our concerns.’
‘They helped us a lot with our IP management matters – we only had to explain what we needed and they handled all the paperwork.’
‘They take the time to answer our questions.’
‘The firm’s lawyers stand out for their analytical criteria, always in pursuit of satisfying clients’ needs in the most cost-effective way. In this regard, the associate Sebastián Prieto Damm stands out for his clarity in the answers and the search for the best alternatives to carry out the cases that arise.‘
‘The team is very solid and provides us with good advice that helps us to effectively carry out the cases of our clients in Chile. The most favourable point that I see with respect to other firms is the team’s speed in the response, without losing detail in the analysis.‘
‘Very good disposition and take the time to solve our questions and advise us on intellectual property and trade mark registration.‘
‘Professionalism and good disposition, knowledge of the subject and ability to provide answers to our concerns.‘
‘The response time to our requirements is fast and they are ordered in the handling of the information that has been requested from them regarding the matters on which they advise us. For their part, they have been effective in winning the instances where oppositions filed by third parties are discussed in the context of registration of new brands.‘
Ab Tetra Pak
Viña Santa Carolina
Distribuidora De Alimentos Globeitalia
Sun World International
Aeroports De Paris
Prolab Industria E Comercio De Cosméticos
Fundacion Minera Escondida
- Assisting Aeroports De Paris with all its IP matters in Chile, including its trade marks and defending it against third parties in IP matters.
- Defended Latin American artist Mon Laferte against various domain name arbitrations.
- Assisted Viña Santa Carolina with brand positioning strategy in China, which included co-ordinating the filing of trade mark applications.
Puga Ortiz Abogados
Puga Ortiz Abogados has substantial experience in registering invention patents, utility models, drawings and industrial designs; registering and defending trade marks, copyrights, domain names, geographical indications and appellations of origin; and defending industrial property infringements and unfair competition actions. The firm also fields specialists in data protection, technology transfer and licences. Cristián Mir has a longstanding practice in trade marks, domain names and copyright, while notable contentious-side support is provided by senior associate Yair Riquelme.
Santa Cruz IP
Specialised boutique Santa Cruz IP was founded in 2019 by Maximiliano Santa-Cruz, the former head of the Chilean Patent and Trademark office for three terms (nine years); it currently houses a four-member team that consistently assists with the design of custom-made IP strategies. The firm expanded its service offering in February 2021 through the hire of Gonzalo Sánchez, as partner, from Sánchez Serrano; Sánchez is a specialist in the use of domain names in Chile and the protection of appellations of origin.
Other key lawyers:
Sergio Larraín Succesion
- Assisted Agrosuper with crafting an IP strategy that was aligned with its commercial strategy.
- Acted for Galería CIMA in lawsuits against television channels for the illegal use of copyrighted content transmitted by the gallery.
- Advised Sergio Larraín Succesion on the management of the IP for the foundation of deceased photographer Sergio Larraín.
Established in 2017, SCR Abogados, which ‘gives clear guidance on how to address IP issues better’, has built up a small but active IP client base, for which it acts on an ongoing basis. The team is well known for its trade mark, licensing and patent expertise, with typical work including trade mark filings and prosecution; patent strategy and prosecution; the registration of plant breeds; trade secrets; and transactional matters. Practice leader and founding partner Juan Francisco Reyes is a former head of Baker McKenzie Chile‘s IP and healthcare practices.
Juan Francisco Reyes
‘SCR gives clear guidance on how to address IP issues better.’
‘Manages to explain IP concepts clearly and they have an extensive network of other firms, which is very useful for the execution of actions in other countries.’
‘Always available to attend to our issues. In several years of work we have never responded late to a request from the countries where we are processing protection actions – and this is largely due to SCR’s careful attention.’
‘Great for the clarity and simplicity to their answers when making decisions on IP matters.’
‘High levels of technical management which give security to us as a company and clarity to our own clients, as well as bilingual work that has facilitated several conversations and agreements with parties in the US and Australia.’
‘We appreciate their knowledge, superior intelligence, work capacity, direct dealings with clients, and meeting of deadlines and goals.’
‘Getting more involved in complex litigation cases, with excellent results.’
‘Juan Francisco Reyes is the best IP lawyer in Chile, which is reflected in his ability to analyse problems and deliver effective solutions.’
Several clients of Rodrigo Palominos
Universidad de Antofagasta
Hotel Nippon (and related entities)
- Acted for Universidad de Antofagasta on the prosecution of a Chilean patent application and co-ordination of its equivalents in eight other jurisdictions.
- Acting for several clients of Rodrigo Palominos (Asociación Cervecera Independiente, Comercial Lupulos, Nicolas Molina and others) in the registration, renewal, assignment and enforcement of their IP rights in Chile.
- Assisted Comercial Peumayen with its IP strategy, particularly in relation to the registration of its service mark “PEUMAYEN”.