With one of the most innovative IP offices in Latin America and a consistently high volume of applications from both IP-savvy domestic companies and foreign filers, Chile is a leading light in the region when it comes to trademark protection. The country is also characterised by greater political and economic stability than many of its neighbours. Chile is not a party to the Madrid Protocol, but practitioners trust that the trademark office leadership are committed to it. Law firms in Chile fear the change less than counterparts in some other jurisdictions because they tend to have sophisticated all-around trademark practices without a heavy concentration on filing work. The WTR 1000 rankings have changed for 2019; Albagli Zaliasnik earns a promotion to silver, while CMS Carey and Allende, Jarry IP and Larrain y Asociados all make their debut in the guide.
- Sargent & Krahn
- Albagli Zaliasnik SpA
- Claro y Cia
- Estudio Villaseca
- Johansson & Langlois
- Porzio Rios Garcia
- Baker McKenzie Chile
- Beuchat, Barros & Pfenniger
- CMS Carey and Allende
- Covarrubias & Cía
- JarryIP Boutique SpA
- Larrain y Asociados
- Mackenna Irarrázabal Cuchacovich & Paz
- Marinovic & Cia
Albagli Zaliasnik SpA
Albagli Zaliasnik renders panoptic legal and commercial support, which it optimises in line with the developmental stage of each client. The success of this model necessitates strong IP expertise, and the full-service outfit has it in abundance – intellectual property has, after all, been a focal area since it entered the market. A key storyline in the set’s narrative this past year has been striking growth in its anti-counterfeiting practice. Fomenting this, Oscar Molina knows how to rally the Chilean authorities to his clients’ cause while astutely leveraging the firm’s renowned criminal department for additional resources, where appropriate. Also possessing fine-milled prosecution skills and media and privacy expertise, he is a triple threat for the likes of Hasbro and Walmart. Meanwhile, Albagli Zaliasnik has kept its finger on the pulse of developments in intellectual property thanks to top litigator Ariela Agosin’s participation in the International Trademark Association’s (INTA) Emerging Issues Committee, which operates on the cutting edge of trademark law. Agosin and the entire group have always been forward thinking, which you can see in the communication style; in emails, for example, all relevant information is put succinctly in the body of the message – PDF attachments and scanned letters are a no-no. Cementing this direct, to-the-point approach as head of the IP practice is Eugenio Gormáz, a whiz on life sciences and patent matters and an astute operator in trademarks. He easily gets to grips with large projects and has been advising Sky Airline on the protection of its brand in nearly 10 Latin American jurisdictions, collaborating with only the best foreign associates.
Versatile in what it can do, fast and accurate in its delivery, technologically sophisticated and commercially aware, Alessandri is a repository of trust for many. Underscoring its standing as a dynamic player, it has been busy in the recruitment market of late, hiring “excellent and experienced lawyer” and respected professor Santiago Ortúzar, as well as several new IP associates. Former Beuchat Barros & Pfenniger anchor Ortúzar has a broad skill set, encompassing all aspects of intellectual property as well as unfair competition and contract law. He thus blends in well with other rangy professionals, such as Rodrigo Velasco Alessandri, a famous copyright and entertainment expert who also litigates patent and trademark cases with aplomb. On the brands side, Velasco Alessandri’s timely interventions have recently put a sharp stop to counterfeiting problems faced by several clients. Focusing particularly on trademarks – but also stirring advertising and regulatory knowhow into her practice – is Loreto Bresky, who makes for a dependable guide throughout all phases of trademark prosecution. The “extremely bright” practitioner is plugged into all that is happening locally and regionally; she sits on the board of the Chilean Industrial Property Association and recently became a regional IP ambassador for the International Chamber of Commerce. Bestowing pearls of IP wisdom on his colleagues and clients is veteran partner Rodrigo Velasco, whose penetrating trademark, domain names and franchising insight has been cultivated over decades.
Baker McKenzie’s Chilean branch excels in complex corporate and M&A transactions and pulls out all the stops in must-win commercial litigations. Naturally, the local team also acquits itself with distinction in the IP domain, serving both as a domestic brand protector and key cog within the firm’s sleek regional trademark operation. Multifaceted IP expert Grelis Marcano is the key contact for interested parties.
Beuchat, Barros & Pfenniger
Earning praise as an “efficient and proactive law firm”, Beuchat, Barros & Pfenniger continues to burnish its IP credentials not just in Chile but on the world stage – it has a far-reaching network of contacts, through which it safeguards clients’ brands and stays current on international trademark trends and developments. Personifying the organisation’s focus on quality is Andrés Melossi Jiménez. Nothing in intellectual property is off limits for the perspicacious managing partner, who has one of the widest-ranging skillsets of any Chilean in the WTR 1000.
Helping blue-chip global food and beverage companies to navigate branding and advertising issues arising out of Chile’s stringent food labelling regulations – modified in June 2018 with restrictions concerning sugar, saturated fats and salt – has dominated elite player Carey’s recent practice in trademarks. Nobody knows what to do in this area of contention better than Francisco Carey, a gold-rated lawyer who reaps fantastic reviews year in, year out. “Francisco is an excellent IP partner who gets really involved in his clients’ matters. He’s a great support, brings successful results and runs a quick and responsive team.” Key members of this team include impressive associates Catalina Aldunate and Tabata Santelices. Aldunate rapidly understands her clients’ commercial concerns and thinks outside the box to give business-relevant advice. Santelices, who debuts in the WTR 1000 this year, is a “responsive, resourceful and highly intelligent lawyer and consummate professional”. The firm’s increasingly prominent role in international IP matters is another notable plotline; a favourite of impactful Chilean technology companies, Guillermo Carey is a name to know in this regard. A member of the American Chilean Chamber of Commerce board and a frontline participant in several top international IP associations, he is super plugged in when it comes to developments in IP law and policy far and wide. Recently flexing his muscles on a complex cross-border dispute involving Chilean and Uruguayan companies – and a former agent of China-based manufacturing entities used by the two – Fernando García also coordinates with a cool head. He is a methodical lawyer whose deep analyses of cases underpins creative strategising.
Claro y Cia
When trademark matters are complicated by dint of regulatory and competition concerns, Claro is the name to call. By seamlessly integrating its different departments, the prestige full-service outfit serves up holistic solutions to the most challenging legal conundrums; as a result, it is trusted by a laundry list of famous international brands. That said, the firm’s trademark department stands confidently by itself, generating approximately 80% of its own work. Instructions come in all shapes and sizes and from all industries, in response to which the team – led by partner Felipe Claro, counsel Paulina Bardón and associate Claus Krebs – delivers advice in flush alignment with clients’ commercial needs. The best known of the bunch and a household name in Latin American and international IP circles, Felipe Claro is “someone in whom you can place the utmost trust”. Calmly authoritative and down to earth, he is easy to approach and available at all hours. Bardón helms the trademark practice and gives clients the full benefit of her 22 years in the practice. “Proactive and responsive”, Krebs litigates with poise and has a confidence-inspiring track record of success. All three take advantage of the organisation’s technological sophistication to manage their cases with rare efficiency.
CMS Carey and Allende
CMS Carey & Allende launched its trademark and IP practice in August 2017 when crackerjack litigator Matias Somarriva came aboard. One of his immediate tasks being to hire another specialist, he swiftly recruited Paz Marambio from Silva. The pair have been flying high since, acting for Red Bull in connection with a domain name dispute; securing a dismissal of a trademark misuse case brought against Cencosud; and setting trademark and sponsorship strategy for Accenture, among many other matters. The team gets glowing notices from rights holders, too: “Its attention to detail and knowledge makes it one of the best in Chile. It gets excellent results that ultimately keep your brand safe.” Notable for those with counterfeiting headaches, Somarriva is the Chilean partner of anti-counterfeiting network REACT.
Covarrubias & Cía
Twenty-five-strong patent and trademark boutique Covarrubias & Ciá is a rock for a host of domestic clients, including many wine companies and mining concerns with local and international IP protection needs. It is also a destination of choice for Asian law firms seeking a single point of contact to liaise with on Chilean and Andean Community matters. Specialist expertise on food packaging, labelling and advertising gives the set an edge, as does its litigation nous and close connections with the Customs authorities. The architect of the firm’s tailored and personal service model is litigator Arturo Covarrubias. He understands that his role is to facilitatehis clients’ business objectives – not hinder them – and he always delivers on the money.
“More focused on producing quality than on marketing itself,” 102-year-old Villaseca is among the most respected IP boutiques in the region. “It has top lawyers and a seasoned team which knows IP law back to front and offers a world-class service.” In the opinion of clients, the Villaseca name stands for “professionalism, timely communication, geographic reach and reliability”. In charge of the trademark and domain name practice, Max Villaseca gets results without making a song and dance about it. He recently acted for Sony Pictures Television in an opposition against an applicant for a ‘Breaking Bad’ trademark; stayed the course and got the win in a long-running cancellation action for Caesars World; and sorted a domain name dispute in favour of Finnish brewer Sinebrychoff. Also letting their experience shine through are Bernardo Serrano and Sergio Amenábar. Serrano’s practice is similar to Villaseca’s, with a concentration on soft IP matters; recent examples of his work include representing Swatch against Apple in an opposition made complex by evidentiary issues. Amenábar is a touchpoint for clients of the firm in need of any service. Joining his fellow partners in the guide for the first time this year is assured leader of the IP enforcement section Felipe Pavez.
JarryIP Boutique SpA
With engineers talking science, business experts talking commercial strategy and lawyers talking legal, JarryIP is geared up to take on any IP challenge and advance its clients’ interests. Its ‘LatAmRIGHT’ international service caters brilliantly to those eager to capitalise on the efficiencies afforded by a one-stop shop for IP protection across Latin America and the Caribbean. Rainmaker and strategist Allan Jarry has outstanding communication skills – he has developed an excellent foreign associate network as a result, and clients love how easy it is to work with him. He and his team do not make invoicing mistakes (large firms often do, then waste time trying to find the error), and take care of all the little things when it comes to customer service.
Johansson & Langlois
Unanimously praised for the quality of its substantive legal work and its “top-drawer service”, Johansson & Langlois has many admirers. Its highly specialised attorneys – who are afforded the benefit of continuous and rigorous training – render an A-to-Z brands service, leveraging a comprehensive trademark database and tailored software to make their advice watertight and their service efficient. The set is one of the best when it comes to the registration of geographical indications. Steering the practice are Chilean Association of Intellectual Property leader Max Montero and trademark and unfair competition all-rounder Christopher Doxrud.
Larrain y Asociados
Larrain may not be one of the market’s big names, but it discreetly safeguards the IP rights and business interests of some big companies; these include Chinese conglomerate Tencent, convenience store chain 7-Eleven, multinational food packaging and processing company Tetra Pak and leading Chilean food company Watt’s SA. Flexible in adapting to the needs of its clients and astute in implementing appropriate technology and collaborative internally, the firm provides a tight, tailored and cost-effective service. Leader of the practice Pablo Ruiz-Tagle is multitalented, with a unique blend of expertise in public and constitutional law, intellectual property and arbitration. He regularly takes to the podium as a speaker on IP topics, publishes articles frequently and has a gift for teaching.
Mackenna Irarrázabal Cuchacovich & Paz
For practical and business-minded counsel across a full range of civil and commercial law areas, Mackenna Irarrázabal Cuchacovich & Paz is a discerning choice. Rodrigo Marré put the firm on the IP map over a decade ago and has maintained its popularity, particularly among international companies and foreign associates. A dynamic, enthusiastic lawyer with a keen strategic sense, Marré knows which way the wind is blowing in intellectual property and charts a smooth course for his clients.
Marinovic & Cia
Anti-counterfeiting is the specialty of Marinovic & Cia, which was set up to provide the market with cutting-edge expertise in the area at a time when it was lacking. Antonio Marinovic and Luis Ignacio Olmedo know how to harness all Chilean authorities engaged in the fight against fakes as effectively as possible and have overseen scores of seizures and criminal prosecutions in their time. The firm also adeptly handles trademark registration matters and IP commercialisation initiatives.
Porzio Rios Garcia
Porzio Rios Garcia is a popular referral choice for foreign associates from other Latin American jurisdictions and from much further afield, too; the erudition of its lawyers, the breadth of its trademark and non-IP expertise and the efficiency of its paralegal and administrative functions makes it truly reliable and a comforting hand holder. Cristóbal Porzio has finely honed negotiation and advocacy skills, which he puts to good use in litigation and IP transactions settings. A board member of several Chilean companies, he has an excellent grasp of business issues, which he brings to the fore in his private practice. Luminary Marino Porzio remains significantly engaged in the practice, directing strategy for the firm and its clients and ensuring his team maintains its cutting-edge legal knowledge.
Sargent & Krahn
“Sargent & Krahn is really impressive in trademark litigation and pulls off great results with remarkable speed and quality.” The perennial WTR 1000 gold-tier member is also the most prolific trademark filer in the country and, naturally, “has an extremely strong patent practice” as well. When you factor in its history – it has been in the IP game for over 120 years – and its sisterhood with leading commercial law setup Cariola Díez Pérez-Cotapos, the firm presents a compelling package. Sweetening the deal further is the authoritativeness of its leading partners Alfredo Montaner and Juan Pablo Egaña. The former is hailed as an “intelligent, incredibly organised attorney”, the latter “the most knowledgeable patent practitioner in Chile”.
Silva has had a strong focus on maturing its patent and technology capabilities in recent years and has been enormously successful in its endeavours, attracting instructions from a plethora of innovative entrepreneurs and start-ups and a majority of the country’s patenting universities. Nonetheless, trademarks remain big business for the group, which protects and enforces the brand rights of a colourful catalogue of clients, including The Smiley Company, heavy metal gods Metallica, Nike and DC Shoes. With trademark owners the world over putting ever greater pressure on fees, law firms engaged in the practice have had a challenge on their hands; Silva’s response to this has been a good one – it has developed proprietary software that manages everything from instructions to invoices. This ‘Silvanet’ platform also integrates various national IP rights databases, so that nothing gets missed. The set’s ambassadors are brothers Juan Pablo Silva and Francisco Silva, who manage the firm and the trademark department respectively. When trouble brews, Andrés Grunewaldt Cabrera is the person to call; he is a litigator who loves being hands-on with his cases. His background as an investigative lawyer and economic crimes department head in the District Attorney’s Office continues to serve him well. Acting for bearings manufacturer Schaeffler Group, he recently saw to the destruction of a dangerous batch of counterfeit bearings used in the mining industry, earning a sizeable payment for his client in the process. Meanwhile, making sure the firm’s administrative apparatus runs without fault is Ricardo Montero, a dyed-in-the-wool trademark lawyer who provides unwavering support to myriad domestic clients.
Other recommended expertsCooper & Cia senior partner Rodrigo Cooper is widely recognised as Chile’s top IP scholar. In terms of real-world problem solving, he has “huge experience”. The founding partner of specialist IP shop Dellafiori Abogados, Enrique Dellafiori has dedicated himself to the IP cause for more than 30 years. He and his staff render services with a personal touch without sacrificing efficiency. Well rounded and with in-house experience on her résumé, Noëlle Jeanneret is an anchor of the IP practice at full-service setup Barrios Muñoz Jeanneret y Cia. She supplements her trademark expertise with knowledge of many adjacent fields, including advertising and competition. Pablo Lineros runs things at Lineros & Cia, a progressive boutique that helps clients not only to protect their rights but to capitalise on them commercially. Lineros knows the lay of the land in the region and has the blueprints for cross-border success. Juan Francisco Reyes of SCR Abogados is “way above average smart”. Further: “if you’re talking about patents, he is the man”. He has a lock on trademark law and is a top arbitrator to boot.
- Francisco Carey - Carey
- Guillermo Carey - Carey
- Felipe Claro - Claro y Cia
- Rodrigo Marré - Mackenna Irarrázabal Cuchacovich & Paz
- Alfredo Montaner - Sargent & Krahn
- Juan Pablo Silva - Silva
- Ariela Agosin - Albagli Zaliasnik SpA
- Paulina Bardón - Claro y Cia
- Loreto Bresky - Alessandri
- Rodrigo Cooper - Cooper & Cia
- Arturo Covarrubias - Covarrubias & Cía
- Juan Pablo Egaña - Sargent & Krahn
- Andrés Grunewaldt Cabrera - Silva
- Allan Jarry - JarryIP Boutique SpA
- Antonio Marinovic - Marinovic & Cia
- Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
- Oscar Molina - Albagli Zaliasnik SpA
- Max Montero - Johansson & Langlois
- Ricardo Montero - Silva
- Luis Ignacio Olmedo - Marinovic & Cia
- Santiago Ortúzar - Alessandri
- Cristóbal Porzio - Porzio Rios Garcia
- Bernardo Serrano S - Estudio Villaseca
- Francisco Silva Dorado - Silva
- Matias Somarriva - CMS Carey and Allende
- Rodrigo Velasco Alessandri - Alessandri
- Rodrigo Velasco S - Alessandri
- Max F Villaseca - Estudio Villaseca
- Catalina Aldunate - Carey
- Enrique Dellafiori - Dellafiori Abogados
- Christopher Doxrud - Johansson & Langlois
- Fernando García - Carey
- Eugenio Gormáz - Albagli Zaliasnik SpA
- Noëlle Jeanneret - Barrios Muñoz Jeanneret y Cia
- Claus Krebs - Claro y Cia
- Pablo Lineros - Lineros & Cia
- Paz Marambio - CMS Carey and Allende
- Grelis Marcano - Baker McKenzie Chile
- Felipe Pavez - Estudio Villaseca
- Juan Francisco Reyes - SCR Abogados
- Pablo Ruiz-Tagle - Larrain y Asociados
- Tabata Santelices - Carey
- Sergio Amenábar V - Estudio Villaseca
- Marino Porzio - Porzio Rios Garcia