Chile

The National Institute of Industrial Property of Chile (INAPI) scores highly in terms of its efficiency; director Maximiliano Santa Cruz “knows a great deal about international standards for the protection of intellectual property” as a result of his work with the World Intellectual Property Organisation and he has used this knowledge to guide his INAPI leadership. Commentators also positively praise the enforcement environment; the police and customs authorities are “highly committed to achieving the right results for brand owners”. Practitioners are awaiting new trademark legislation which will introduce a use requirement and allow for the protection of three-dimensional signs; unfortunately a busy public agenda in the country is slowing down the passage of these reforms.

Firms

1
Carey
Sargent & Krahn
Silva
2
Alessandri & Compañia
Claro y Cia
Estudio Villaseca
Johansson & Langlois
3
Albagli Zaliasnik SpA
Baker McKenzie Chile
Beuchat, Barros & Pfenniger
Covarrubias & Cía
Mackenna Irarrázaval Cuchacovich & Paz
Marinovic & Cia
Porzio Rios Garcia
Albagli Zaliasnik SpA
“Albagli Zaliasnik is swift to respond and brings a level of commercial awareness to the table that is not easy to find elsewhere; it outperforms its peers in Chile in this regard.” The firm fosters this business focus through a structure that is not divided along practice-area lines; instead, it first examines what each client needs and then builds a cross-departmental team to meet this. This is particularly evident in the ensemble’s approach to trademark infringement litigation and anti-counterfeiting; the IP crew works closely with the general commercial litigators to deliver textbook performances. Responsible for much of the group’s litigation and enforcement success is Ariela Agosin, whose broad experience in international law, commercial dispute resolution, unfair competition law and intellectual property prepares her for just about anything. She recently secured a favourable Supreme Court decision on behalf of New Balance against Hyundai Motors and has also secured protection for Wal-Mart’s slogan “Save money. Live better”, also before the Supreme Court. Eugenio Gormáz is a key contact for prosecution and strategy briefs; as well as winning new mandates from prestigious universities, he has also lately been managing the portfolios of Sky Airline and Wal-Mart, as well as numerous pharmaceutical companies, including Laboratorios Recalcine. In January 2017 Gormáz took on the leadership of the IP section – a well-deserved promotion.
Alessandri & Compañia
Alessandri understands the importance of intellectual property as a strategic business asset and, rather than just churning out filings as some rival agencies do, it takes a highly sophisticated and commercial approach to trademarks. This attitude is aided by the set’s cutting-edge expertise in advertising and regulatory law. Never one to stand still, the firm has ushered in some important structural changes of late; most notably, Rodrigo Velasco Alessandri became the new managing partner of the IP section, a move which has injected more dynamism into a practice that was already buzzing. Getting involved at an IP policy level is a longstanding tradition that Velasco Alessandri has wisely kept going. He recently enjoyed a major success for Domino’s against Productos Alimenticios Donut, which owns the trademark ‘DOMINÓ’ for a chain of restaurants and bars in Chile; the latter sued the former, but Velasco Alessandri ensured that the court ruled against the notion of consumer confusion. In another important change, Raúl Montero was promoted to the partnership and appointed the head of trademark litigation. Loreto Bresky – another crucial contact for brand owners – also had a big year in 2017, winning awards from the legal press for her trademark proficiency. Rodrigo Velasco Santelices has continued to do what he does best, namely providing holistic guidance to brand owners on protection, enforcement and commercialisation matters. He is well known internationally through the prominent roles he plays in many domestic and international IP organisations; for example, he was previously served as vice president of the Chilean Industrial Property Association and currently serves as a member of the World Intellectual Property Organisation’s panel of arbitrators and mediators.
Baker McKenzie Chile
Baker McKenzie has decades of experience in the Chilean market and is widely respected for its corporate, dispute resolution and tax practices. The firm is famed as a global leader in the trademark arena and the Santiago branch does not let the side down in this regard. Although the recent departure of Juan Francisco Reyes was a blow for the IP group, it still retains the confidence and loyalty of many household international brands thanks to the presence of Grelis Marcano. She spent 13 years working as a senior associate at the firm’s Caracas office before moving to Santiago to continue her excellent work managing large portfolios and preparing and executing administrative actions. Marcano is a true all-rounder who also provides perspicacious advice on infringement scenarios and monetisation opportunities.
Beuchat, Barros & Pfenniger
The trademark practice is a central pillar of Beuchat, Barros & Pfenniger’s A-to-Z IP offering; the team is passionate about brands and does its utmost to protect and enforce its clients’ slogans and marks. The firm’s refined IT tools enable it to keep a watchful eye over the market to ensure that the legal safeguards it obtains are respected – an added value that a less assiduous agent might not be able to deliver. The Beuchat practitioners are also capable trademark litigators and anti-counterfeiters; in the event of any encroachment on patrons’ territory, solutions are quickly identified. Managing partner and worldly wise counsellor Andrés Melossi Jiménez is a great first port of call for any trademark or patent-related question.
Carey
Perennial WTR 1000 gold-tier member Carey continues to reign supreme in Chile: “It is the biggest IP firm in the country and has an incredible portfolio of trademark work and clients.” “The team really cares about the quality of its product” and the 5,000-plus patents and 28,000-plus trademarks it has responsibility for are in the very best of hands. In the courtroom, the group has proved its mettle on the most important patent and trademark infringement cases in Chile, which gives litigants confidence as they head into battle. Guillermo Carey and Francisco Carey form the bedrock of an expert panel of high-calibre professionals and the pair receive glowing reviews from the marketplace: “Guillermo is the ultimate lawyer who, in addition to his amazing understanding of the law, has a unique vision when it comes to practice trends and the conduct of business. He was one of the first lawyers in Latin America to deal with domain names and e-commerce issues holistically and has developed the best regulatory practice in Chile. He is someone you can use for any mandate, and have peace of mind that nobody else can handle the matter better.” “Francisco has deep legal and technical knowledge, but also understands the political situation in Chile and how to deal effectively with multiple bodies and departments of the government. He is able to articulate and design clear and coherent business strategies and is pragmatic, flexible, client-oriented and always available.” The two lead the practice together with counsel Fernando García, an expert on IP issues in the pharmaceutical, medical device, cosmetics and food industries. These three senior figures have the support of an outstanding pool of associates, which includes trademarks, domain names, anti-counterfeiting and licensing ace Catalina Aldunate, who makes her third consecutive appearance in the guide this year.
Claro y Cia
When things get complicated multinationals make a beeline to Claro for guidance. The compact IP team at this full-service firm out muscles many larger groups and has an excellent track record in precedent-setting IP court litigation and administrative proceedings, as well as in managing portfolios in the most commercially advantageous fashion. That it generates most of its own work – rather than relying on in-bound instructions from other departments – says much about the team’s quality and its high standing in the marketplace. Over the last year, Felipe Claro has fully immersed himself back into the practice following his presidency of the International Association for the Protection of Intellectual Property. Clients can go to him for a global view, as well as for bespoke, multifaceted, practical and policy-level advice. Foreign associates, including many from Germany, laud Claus Krebs, “a proactive, responsive and excellent attorney”. He frequently works with Claro on infringement matters and the two make up a dynamic duo. Supplying resolute leadership to the trademark team is the brilliant Paulina Bardón who, like Krebs, has over two decades of experience to call upon. She overlays her knowledge of the law with a strategic approach and has cultivated an ardent following of stellar international brands thanks to her unstinting dedication to quality.
Covarrubias & Cía
“A great and fast-growing practice”, Covarrubias & Cía is garnering plenty of attention at the moment. The boutique prepares meticulous search reports and risk analyses that enable clients to put their best foot forward as they launch new brands; once products are on the shelf, the team does a top job keeping them there by providing ongoing protection and by fending off competitors in opposition and cancellation actions and in litigation. Managing the dynamic ensemble is seasoned IP litigator Arturo Covarrubias. When he is not fighting his clients’ corner, he is writing, speaking and teaching on the subject of intellectual property; he is steeped in the discipline and keeps abreast of all IP developments in Chile and abroad.
Estudio Villaseca
“Estudio Villaseca has important trademark clients and serves them well by effectively adapting to developments in the Chilean business environment.” The firm provides a complete menu of trademark protection and enforcement options, but is at its best in contentious administrative proceedings at INAPI. The collective experience of the side’s partners is a magnet for rights holders – luminary Sergio Amenábar and partners Max Villaseca and Bernardo Serrano have over 100 years of IP practice between them. Amenábar bestows his wisdom on colleagues and clients in a general counsel role; Villaseca takes the lead on domain names and foreign trademark matters, while Serrano manages the domestic trademark department.
Johansson & Langlois
With holistic IP services becoming more and more popular, Johansson & Langlois is valued for its ability to provide end-to-end prosecution, enforcement and IP monetisation assistance efficiently and economically. The firm is a destination of choice for regional foreign associates looking to seal protection and enforce rights in Chile; correspondents know that the group will devote the necessary resources to obtaining the right result quickly and efficiently. Central trademark contacts Max Montero and Christopher Doxrud have a global perspective on intellectual property and are adept litigators.
Mackenna Irarrázaval Cuchacovich & Paz
The four-partner team at Mackenna Irarrázaval Cuchacovich & Paz covers a lot of ground, delivering a comprehensive business law service to domestic and foreign patrons with a personal touch. The company’s IP practice has no blind spots either; this is run by Rodrigo Marre, who dispatches prosecution and enforcement instructions with an assured hand, identifying effective solutions to both routine and unusual problems. Prominent within the International Trademark Association and the Inter-American Association of Intellectual Property, he keeps his ear to the ground when it comes to global and regional trademark law, policy and practice trends, so that he can offer advice which is at the cutting edge of modern IP development.
Marinovic & Cia
For gold-standard anti-counterfeiting expertise, look no further than true specialist Marinovic & Cia. The firm was founded as an anti-piracy boutique in 1987 and has three decades of experience customising and executing sweeping domestic and regional enforcement programmes. The organisation now offers a broad array of services, so that brand owners with infringement headaches can shop here for integrated corporate, tax and full-scope IP solutions. Founding partner Antonio Marinovic provides comfort when trouble brews and possesses a rare ability for halting the activities of those engaged at all levels of the counterfeit goods trade. His partner in (stopping) crime is Luis Ignacio Olmedo, who has done much to develop Chile’s copyright and trademark laws through the assistance he has provided to Congress and various local authorities.
Porzio Rios Garcia
Founded as a specialist in intellectual property, Porzio Rios Garcia has a rich comprehension of all fields of commercial law and, by cross-fertilising best practices from one area to the next, it is able to support business development and strengthen legal security for brand owners in many meaningful ways. An erudite team of professionals, many of whom also teach Chile’s next generation of legal stars, is helmed by founding partner Marino Porzio, an elder statesman who does much to elevate the IP discussion in Chile. He is endorsed by contemporaries as one of the country’s most experienced and distinguished IP experts.
Sargent & Krahn
Sargent & Krahn has been operating at the vanguard of intellectual property for over 120 years and is the largest specialist IP firm in Chile. The crew makes the management of large portfolios a breeze thanks to its sophisticated IT systems and all-inclusive database; it also has one of the best and farthest-reaching foreign associate networks, putting it in pole position to handle all manner of cross-border protection efforts. A supremely well-rounded outfit, it has also occupied frontline roles on many landscape-shaping patent and trademark litigations. Although the team recently lost out with the departure of Matias Somarriva, who left to set up his own practice, it retains the services of IP masterminds Alfredo Montaner and Juan Pablo Egaña. A Sargent & Krahn partner for nearly 30 years, Montaner “has an extraordinarily deep well of trademark and IP knowledge” to draw on and provides assured leadership to the firm. Egaña is chiefly hailed for his patent litigation prowess and is “highly skilled at handling the most complex cases”. He also has a deft touch when it comes to trademarks and exploits supplementary knowledge of the unfair competition area.
Silva
Regional patrons recommend Silva without hesitation, praising its “outstanding client-service credentials” and “lightning-fast response times”. The group is highly respected for its prosecution proficiency and ability to handle voluminous filing programmes efficiently and cost-effectively; it also puts in top-class performances in administrative actions at INAPI, as the US National Football League and Nike have recently found out. On the litigation front, the set has enjoyed success by virtue of staying the course in complex, long-running conflicts and by reacting swiftly when it comes to more recent flare ups. The ability to navigate clients through regulatory minefields and provide a full range of copyright, patent, IT and transactional IP services makes Silva a true one-stop shop. “The quality of the firm’s attorneys, from partners all the way to junior associates is excellent.” Shining with particular lustre are practice heads Juan Pablo Silva and Francisco Silva – they are “really focused on clients’ business needs” and keep “on top of everything”. In the litigation and enforcement driving seat is Andrés Grunewaldt, the group’s most newly appointed partner. He knows how to make the best use of all available civil and criminal tools in order to deliver enforcement success.

Individuals

Francisco Carey - Carey
Guillermo Carey - Carey
Felipe Claro - Claro y Cia
Rodrigo Marre - Mackenna Irarrázaval Cuchacovich & Paz
Alfredo Montaner - Sargent & Krahn
Juan Pablo Silva - Silva
Ariela Agosin - Albagli Zaliasnik SpA
Paulina Bardón - Claro y Cia
Arturo Covarrubias - Covarrubias & Cía
Juan Pablo Egaña - Sargent & Krahn
Andrés Grunewaldt Cabrera - Silva
Antonio Marinovic - Marinovic & Cia
Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
Max Montero - Johansson & Langlois
Luis Ignacio Olmedo - Marinovic & Cia
Bernardo Serrano S - Estudio Villaseca
Francisco Silva - Silva
Matias Somarriva - CMS Carey & Allende
Rodrigo Velasco Alessandri - Alessandri & Compañia
Rodrigo Velasco Santelices - Alessandri & Compañia
Max F Villaseca - Estudio Villaseca
Catalina Aldunate - Carey
Loreto Bresky - Alessandri & Compañia
Rodrigo Cooper - Cooper & Cia
Enrique Dellafiori - Dellafiori Abogados
Christopher Doxrud - Johansson & Langlois
Fernando García - Carey
Eugenio Gormáz - Albagli Zaliasnik SpA
Allan Jarry - JarryIP
Noëlle Jeanneret - Barrios Muñoz Jeanneret y Cia
Claus Krebs - Claro y Cia
Pablo Lineros - Lineros & Cia
Grelis Marcano - Baker Mckenzie Chile
Juan Francisco Reyes - SCR Abogados

Luminaries

Sergio Amenábar V - Estudio Villaseca
Marino Porzio - Porzio Rios Garcia
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Issue 71