Chile

Although it ranks as one of the most stable and prosperous nations in Latin America, Chile has experienced a dip in its economic fortunes over the past year, largely due to weak commodity prices. Consumer and investor confidence has been shaken, so it is no surprise to see a corresponding drop in trademark activity. Looking at the statistics for the first quarter of 2016 compared to the same period the previous year, the majority of firms saw filing numbers fall. Practitioners are confident, however, that the situation should gradually improve in 2017.

Firms

1
Carey
Sargent & Krahn
Silva & Cia
2
Alessandri
Claro y Cia
Estudio Villaseca
Johansson & Langlois
3
Albagli Zaliasnik
Baker McKenzie Chile
Beuchat, Barros & Pfenniger
Clarke Modet & Co
Covarrubias & Cía
Mackenna Irarrazaval Cuchacovich & Paz
Marinovic & Cia
Porzio, Rios & Associates
Albagli Zaliasnik
With recommendations flooding in from Rio de Janeiro, London and Tokyo, it is clear that Albagli Zaliasnik enjoys a tremendous international reputation. Its trademark practice is coming on in leaps and bounds thanks to the sophisticated technological systems it has integrated to facilitate the management of large portfolios. In Chile, it doesn’t get much larger than the 2,500-plus trademark docket of pharmaceutical company Laboratorios Recalcine, the country’s most prolific filer in 2015 and a satisfied customer of the firm for many years. A-list US brands such as Wal-Mart and Hasbro also shop here for Chilean trademark management services. A wealth of litigation and anti-counterfeiting know-how makes it a reliable hand holder in contentious scenarios, too. The “especially swift service” rendered by “outstanding IP lawyer and leader” Ariela Agosin is always in hot demand. The IP group chief is a multi-faceted operator with experience across a number of disciplines. She has a particularly nuanced understanding of branding issues in the heavily regulated pharmaceutical sector and is also a leading light on advertising law, currently serving as the Global Advertising Lawyers Association regional president of the Americas. Together with Agosin, WTR 1000 sophomore Eugenio Gormáz is one of Recalcine’s key contacts. His deft touch on trademark and patent matters makes him another versatile tool for rights holders.
Alessandri
Delighted by its “great work and commitment”, clients praise “business-driven” set-up Alessandri to the skies. “It identifies and confronts problems in a sensible, intelligent manner” and always keeps an eye on client spending; in fact, “it does its utmost to make every operation as inexpensive as possible”. The set’s cross-border capabilities also shine when put to the test: “It has a great ability to coordinate international work and has good connections with firms in many principal markets.” Group head and “Chile’s finest”, Rodrigo Velasco Santelices is “incredibly smart and brilliant on complex theoretical questions”. These days, however, it is Rodrigo Velasco Alessandri who is leading in the trenches and, by all accounts, he is doing a terrific job. “He is very quick to understand the problems you face as a brand owner and really takes care of you, acting almost like a member of your company. He is also brilliant on costs and deadlines.” There is no shortage of talent on the squad and Loreto Bresky is another must-have name for the contact book. With her blend of trademark, advertising and unfair competition expertise, she is ideally positioned to handle trademark issues that may extend beyond the IP sphere. She has her finger on the pulse of branding trends and issues in the apparel and cosmetics sectors, and acts for discerning brands such as L’Oreal.
Baker McKenzie Chile
Baker McKenzie’s Santiago contingent enjoyed a red-letter year in 2015; it not only enticed several major new clients, including 3M, over to its stable, but also added extra experience and dynamism to its squad by transferring uber-bright rising star Grelis Marcano from the Caracas office. The firm’s rise in prominence is down to the diligence and dedication of Juan Francisco Reyes. His CV is littered with notable recent work highlights, such as a major rebranding project for Nissan and the favourable resolution of domain name disputes for Caterpillar, for which Chile is a key market. He nets sparkling reviews from clients, who love his “straightforward thinking and clear advice” and find him to be “a great listener and practical problem solver”. “He is an exceptional professional with a vast knowledge of trademark law, and the recommendations he makes are very personalised to your circumstances.” The team he has put together is “extremely responsive and quick to act”, and includes associates who are “precise and to the point”.
Beuchat, Barros & Pfenniger
Beuchat, Barros & Pfenniger continues to wow domestic peers, earning its sixth-straight inclusion in the WTR 1000 this year. People feel very comfortable working with the long-standing boutique, which is “practical, closes deals and doesn’t lose time”. Managing partner Andrés Melossi Jimenez is the man for brand owners to reach out to: “He knows everything there is to know about Chilean trademark procedures and has a great background and extensive experience.”
Carey
“The leading general law firm in Chile”, Carey likewise practises at the apex of the market when it comes to brands. Consolidation has been a big part of the story in the past year – its IP team and IT systems have benefited from closer integration – but growth in areas such as anti-counterfeiting and regional coordination are also part of the plot. The trademark team is well known for the broad perspective it takes to all briefs and has no problem advising in ancillary areas; its expertise – particularly that of Fernando Garcia – on labelling issues is in especially hot demand following the introduction of (controversial) new food labelling regulations. Guillermo Carey and Francisco Carey set the tone of excellence and provide strong leadership to the group. Guillermo is a life sciences and technology sage with a keen understanding of trademarks; all aspects of his expertise are currently being utilised by Crystal Lagoons, among others. Super-popular Francisco Carey has a brilliant track record in trademarks, having successfully handled litigation for PepsiCo, registrations for Nestlé and anti-counterfeiting efforts for The North Face. “He fully understands his clients’ needs and is really commercial in his strategies.” They have surrounded themselves with some of the industry’s brightest talent: associates such as Catalina Aldunate are coming into their own right now and taking on increased responsibility.
Clarke Modet & Co
On the say-so of peers, Clarke Modet & Co earns its inaugural inclusion in the Chile listings this year. It presents a unique and compelling offering, with the ability to serve clients and manage portfolios across the hispanophone and lusophone worlds from 34 offices in 10 jurisdictions. This range has proved a potent one for a slew of regional and international players.
Claro y Cia
While compact, the IP division at “extremely well-rounded commercial firm” Claro really delivers on all fronts for marquee brand owners including Coca-Cola and General Electric. The team’s responsiveness and efficiency draw glowing notices: “It understands what you need and its high-quality advice has just the right level of detail to enable you to make smart decisions. It also reacts quickly to any communications.” Paulina Bardón helms the trademark group to much acclaim. One foreign associate calls her “the best correspondent in Latin America – incredibly fast, clear and practical”. Another praises her “open and honest approach – she tells you what she thinks and dialogue with her is always straightforward. She is great at thinking on her feet”. Claus Krebs is an invaluable member of the team and has lately been advising on cutting-edge issues such as plain packaging of tobacco products. Playing the title role is the “extraordinarily knowledgeable” Felipe Claro, the 2014 to 2016 president of the International Association for the Protection of Intellectual Property.
Covarrubias & Cía
Bijou boutique Covarrubias & Cía endears itself to patrons with the passion for intellectual property that it displays at every turn. It is home to robust patent and trademark practices and is led by Arturo Covarrubias, “a widely respected lawyer with a highly developed business sense”. Brand owners can capitalise on its broad service offering, which encompasses prosecution and litigation, as well as specialty issues such as geographical indications and domain names.
Estudio Villaseca
Estudio Villaseca is one of the best in the business at overcoming unfavourable first-instance decisions of the National Institute of Industrial Property and at registering trademarks in the face of opposition. Its team is vastly experienced in contentious administrative proceedings, which it handles day in, day out. The firm’s sky-high standards extend to its hearty bread-and-butter prosecution practice, as well as its contentious capabilities. “Solid, consistent and reliable”, its trio of veteran partners – Sergio Amenábar, Max Villaseca and Bernardo Serrano – together represent a persuasive option for clients seeking to line up all their IP ducks in a row.
Johansson & Langlois
Though it has fans all over the world, Johansson & Langlois enjoys particularly close ties with Brazilian IP players and is trusted as a safe pair of hands in Chile by the best of them. “Its lawyers are serious and committed, and their meticulous attention to detail is what enables successful outcomes for clients. In terms of quality and reliability, it is easy to recommend and it charges a reasonable fee, too.” The firm has a talented staff of lawyers and administrators – as well as highly developed IT software – to take care of prosecution matters without fuss; by all accounts, it also “continues to do fantastic work” on the non-contentious side of the practice. Max Montero and Christopher Doxrud are the lead trademark partners in the line-up.
Mackenna Irarrazaval Cuchacovich & Paz
Mackenna Irarrazaval Cuchacovich & Paz has now chalked up over a decade of experience, but its proactive, dynamic and specialised IP team continues to be a breath of fresh air on the market. Its astute, personalised approach makes it a valuable ally for brands looking to do things a little more strategically. The firm’s trademark capabilities run the gamut; whether handling a large seizure of counterfeits for a sportswear manufacturer or registering difficult trademarks for an outdoor gear company, it always goes the extra mile so that clients can achieve their goals. In the driving seat is effervescent lawyer Rodrigo Marre, who is widely tipped as a present and future star of trademark and unfair competition practice in Chile. An influential figure in the International Trademark Association (INTA) – he is an associate member of the 2016 INTA Nominating Committee – he practises with a thoroughly modern and international outlook. He has fashioned a strong team around him, with associates who know their stuff inside out and are all about client service.
Marinovic & Cia
Best known for its anti-counterfeiting prowess, Marinovic was initially established as a specialist in this area, but client demand led to a broadening of its offering. While today it remains at the vanguard in the fight against fakes, it also manoeuvres deftly in other areas of intellectual property, as well as tax and corporate law. Founder Antonio Marinovic and prolific campaigner Luis Olmedo are anti-counterfeiting gurus who have masterminded enforcement programmes for brand owners in many different sectors. They have also played a key role in the development of related trademark law and government practices in Chile.
Porzio, Rios & Associates
Although it has moved into other areas of law following the establishment of a sibling firm for this purpose, Porzio, Rios & Associates has never taken its eye off the IP ball. Foreign associates are quick to highlight its patent proficiency, but also happy to endorse it on the trademark side. Despite the current dip in the market, it is keeping up with the filing pace it set in 2015; with its solid civil infringement litigation and anti-counterfeiting know-how, it is also thriving on the contentious side. Influential founding partner Marino Porzio – a former long-time World Intellectual Property Organisation officer – continues to guide the firm’s success. He is a polyglot with a strong foundation in all areas of intellectual property.
Sargent & Krahn
Sargent & Krahn does a wonderful job of two things in particular: understanding clients’ commercial drivers and goals, and solving their problems holistically, rather than simply from a trademark perspective. An association with full-service outfit Cariola Diez Perez-Cotapos reaps significant dividends in this regard. The organisation and those it represents were happy to see Alfredo Montaner’s return in 2016 after a short time away from the profession. He is a touchstone lawyer for titans such as Philip Morris, which he recently assisted in connection with a major criminal trademark infringement proceeding which eventually led to the imprisonment of the defendant. Whatever the situation, “he always provides thoughtful guidance and is a pleasure to work with”. Clients get a strong one-two punch when Montaner teams up with Matias Somarriva, who leads the IP litigation arm. Peers note with envy that Sargent has a “huge and excellent associate pool”, as well as “outstanding processes and one of the biggest databases of any firm prosecuting trademarks”.
Silva & Cia
“Very dynamic, especially in the local market”, Silva is one of Chile’s “heavy hitters on the trademark side”. It has been all systems go of late, as the commercially minded set strives to stay competitive and plan for the future; launching a new website, increasing office space, promoting internally and implementing new administrative software are recent activities that showcase its proactivity. “The engine of the firm”, Juan Pablo Silva “makes all the right moves to maintain his organisation’s exceptional domestic client base”. “Extremely keen and quick” lawyer Francisco Silva heads the international desk. He deals with a lot of foreign lawyers, who deem him “straightforward – he is someone you can call quickly and get a gut reaction from”. Gonzalo Sánchez is also recommended and brings much to the table, including a wealth of alternative dispute resolution, licensing and geographical indications expertise. Taking charge of the contentious arm – and driving its recent growth – is newly minted partner and “ultra-smart” operator Andrés Grunewaldt Cabrera. He is busy attending hearings and filing actions left, right and centre, but never drops the ball on any file.

Individuals

Guillermo Carey - Carey
Francisco Carey - Carey
Felipe Claro - Claro y Cia
Rodrigo Marre - Mackenna Irarrazaval Cuchacovich & Paz
Alfredo Montaner - Sargent & Krahn
Juan Pablo Silva - Silva & Cia
Ariela Agosin - Albagli Zaliasnik
Paulina Bardón C - Claro y Cia
Andrés Grunewaldt Cabrera - Silva & Cia
Antonio Marinovic - Marinovic & Cia
Andrés Melossi Jimenez - Beuchat, Barros & Pfenniger
Max Montero - Johansson & Langlois
Luis Olmedo - Marinovic & Cia
Bernardo Serrano S - Estudio Villaseca
Francisco Silva - Silva & Cia
Matias Somarriva - Sargent & Krahn
María Luisa Valdés - Sargent & Krahn
Rodrigo Velasco Alessandri - Alessandri
Rodrigo Velasco Santelices - Alessandri
Max F Villaseca - Estudio Villaseca
Catalina Aldunate - Carey
Loreto Bresky - Alessandri
Rodrigo Cooper - Cooper & Cia
Arturo Covarrubias - Covarrubias & Cía
Christopher Doxrud - Johansson & Langlois
Fernando García - Carey
Eugenio Gormáz - Albagli Zaliasnik
Noëlle Jeanneret - Barrios Muñoz Jeanneret y Cia
Claus Krebs - Claro y Cia
Pablo Lineros - Lineros & Cia
Grelis Marcano - Baker McKenzie Chile
Juan Francisco Reyes - Baker McKenzie Chile
Gonzalo Sánchez - Silva & Cia

Luminaries

Sergio Amenábar V - Estudio Villaseca
Marino Porzio - Porzio, Rios & Associates
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Issue 68