The Chilean trademark community is eagerly awaiting the outcome of a bill being debated in the National Congress which would revise the current IP law. Among other things, it would recognise non-traditional trademarks, such as 3D marks, and introduce a use requirement – developments which should spark an uptick in inbound traffic. Chile also boasts one of Latin America’s most dynamic offices, the National Institute of Industrial Property (INAPI), which runs a Continuous Improvement Programme in order to improve the efficiency of its filing systems. It works in tandem with other Latin American and Caribbean offices through cooperation agreements and is now collaborating with public law corporation SERCOTEC to provide support for start-ups in a move which should enhance the country’s IP exporting stock. INAPI’s concerted efforts to tackle gender equality in intellectual property are also laudable: it is partnering with several private and public organisations which are committed to increasing female participation in innovation, and thus ultimately in filing activity.
- Sargent & Krahn
- Albagli Zaliasnik SpA
- Claro y Cia
- Johansson & Langlois
- Villaseca Abogados
- Baker McKenzie
- Beuchat, Barros & Pfenniger
- CMS Cameron McKenna Nabarro Olswang LLP
- Covarrubias & Cía
- Dellafiori Abogados
- Garay IP
- Jarry IP
- Larrain y Asociados
- Mackenna Irarrázabal Cuchacovich & Paz
- Marinovic & Cia
- Muñoz Jeanneret y Cia
- Porzio Ríos García
Albagli Zaliasnik SpA
“A full-service firm operating at the vanguard of the Chilean market”, Albagli Zaliasnik enjoys a tremendous international reputation for its forward-thinking legal solutions. The IP practice maintains this standard and has enjoyed consistent market growth in recent years, reflected by a growing headcount and the addition of new clients such as Mitsui Group to its roster. Using cutting-edge technological systems, the ensemble undertakes smart portfolio management for marquee brands such as Walmart; but the jewel in its crown is its thriving litigation and enforcement offering, which is attracting instructions from the likes of Hasbro. Responsive for the group’s successes across the board are Ariela Agosin, Eugenio Gormáz and Oscar Molina. Agosin drives the contentious division and – with deep experience in unfair competition, commercial disputes and cross-border legal issues – is well equipped to deal with any brief going. IP head and recently promoted partner Gormáz is hailed as “one of the best lawyers in Chile and a true pleasure to work with”. He comes “recommended for his astute and practical solutions”, and his “consistent availability and reliability, which are crucial when navigating demanding international markets”. Directing the IT, data privacy and technology practice, Molina draws on keen technical and business insight in catering to the diverse branding needs of global players such as Entertainment One and McCann Worldgroup.
“Alessandri is Chile’s largest and most complete law firm, both in general practice and intellectual property.” Adopting an integrated approach between legal areas, the technologically sophisticated, commercially aware full-service outfit has become a repository of trust for A-list companies, providing complete legal and business support to the likes of Ferrari and Sanofi. As a reflection of its successes, managing partner Rodrigo Velasco Alessandri ascends to the WTR 1000 gold tier this year. Recent activity has included oppositions and domain name scenarios for Uber – a client which is also in Santiago Ortúzar’s address book. Another fine IP all-rounder, Ortúzar has a knack for nurturing domestic clients to become international competitors. On the non-contentious side, of counsel Rodrigo Velasco is a veteran partner whose deep market knowledge is shared not only with clients, but also with the wider IP world through prominent roles in international organisations.
Baker McKenzie’s abundant international resources are scarcely rivalled, but that is not the only USP of its Chilean outpost: it keeps its ear to the ground on local developments to consistently provide the premium service for which it is reputed on both a national and global scale. Highly communicative between its multiple practices and jurisdictions, it ensures that every brief is dispatched time and cost efficiently – a centralised approach that proves ideal for multinational brands. Versatile local partner Valentina Venturelli takes charge of IP matters in Santiago. She makes a strong showing in prosecution for the likes of Nissan, but also oversees an effective contentious offering; alongside frequent anti-counterfeiting activity, she recently helped Abbott Laboratories to overcome oppositions and Victoria’s Secret with an annulment action.
Beuchat, Barros & Pfenniger
Trademarks are a forte of Beuchat, Barros & Pfenniger, a boutique which over 55 years has cultivated a rich tradition of excellence across the IP spectrum. The team maintains this to this day, drawing on ingrained market knowledge to identify new ways to help clients build their commercial positions and achieve their business objectives through the smart use of their own intangible assets and the firm’s IP management tools. Keeping the set fighting fit is managing partner Andrés Melossi Jiménez, a percipient professional with “a deep comprehension of national and international legislation” who makes light work of multifaceted filing and opposition mandates.
Utilising “Chile’s biggest” full-service backing to superb effect, Carey’s IP offering is a force to be reckoned with – over 100 talented professionals combine to offer A-to-Z technical and legal expertise. Running robust litigation and prosecution practices – it is a leader in the filing stats – it also boasts specialised units focused on technology, data and anti-counterfeiting, to cover all bases for clients. Gold-tier department co-heads Guillermo Carey and Francisco Carey steer the ship. Silky-smooth negotiator Guillermo wins plaudits for his technological savvy, having advised the Chilean government on IP and tech transfer matters; as a result, he is a preferred choice for players in the high-tech industries. A brand all-rounder who comes commended for his “deft handling of matters across prosecution and litigation”, Francisco is at the heart of most of the firm’s trademark cases and frequently combines with Fernando García, Catalina Aldunate and Tabata Santelices to make a killer team. Alongside esteemed counsel García, he recently handled cancellation proceedings on behalf of Clorox. Aldunate has seen and done it all, but stands out in particular for her poised performances in disputes for the likes of Sketchers and Oakley. Santelices is a commercially attuned advocate who has lately been busy negotiating co-existence agreements, alongside lots of opposition work.
A distinguished name on the Latin IP scene, ClarkeModet is a preferred option for multinationals seeking cost and time-efficient trademark counsel. The seamlessness of its services has recently been supercharged: it has revamped its internal department structure to enhance its relevance for modern businesses and has invested in cutting-edge technology to expedite brand management decisions. As a key cog in the wider firm’s streamlined machine, the Chilean outpost manages a number of important portfolios. Not just an efficient filing shop, however, it boasts broad technical and legal know-how and can be relied upon not only to untangle tight contentious knots, but also to broker favourable outcomes in licensing negotiations.
Claro y Cia
Claro y Cia is tipped as “the best in the business” when it comes to complicated IP briefs. The compact team sits within a vibrant full-service structure and is specialised in niche areas such as regulatory and competition law, giving it all the tools necessary to tackle commercially consequential trademark matters. Department head Felipe Claro is a client magnet whose “extremely service-minded and responsive approach” chimes with marquee brand owners such as the Coca-Cola Company. He and frequent collaborator, counsel Paulina Bardón, are celebrated for their “thoughtful, out-of-the-box strategies”; they recently negotiated a profitable licensing agreement for Viña Santa Rita with Arsenal Football Club. Claus Krebs also provides invaluable support in disputes, including in a recent domain name spat for Spotify. His command of Spanish, English and German makes for effortless communication with European clients.
The IP offering at commercial outfit CMS Carey & Allende is relatively new, but has quickly made a name for itself, particularly in enforcement circles. This is in large part thanks to department head Matias Somarriva, an authority in the area; as the Chilean partner to global anti-counterfeiting organisation React, he attracts a slew of instructions from an extensive network of contacts. No one-trick pony, Somarriva is also active in brand management and protection, on which he often teams up with Paz Marambio – a key contact for the firm’s most important clients, which appreciate his “high levels of professionalism and customer focus”.
Covarrubias & Cía
Covarrubias & Cía is home to a young team of legal and technical experts who offer “prompt and clear responses to the most complex IP matters”. “Widespread accessibility and a willingness to communicate with clients” are further hallmarks, as are “competitive costs” – a potent cocktail which is shaking up the market. The man driving the practice is all-rounder Arturo Covarrubias, who “carefully evaluates assets in light of current trends and legislation, before taking a precise course of action which makes business sense”. Joining him in the WTR 1000 for the first time this year is international trademark department head Sofia Covarrubias, who pairs up with Arturo for the likes of Samsung and CONMEBOL.
Boutique Dellafiori Abogados dispatches brand protection and enforcement mandates with a keen eye on clients’ target trajectories; consistently upgrading its systems and processes, it does so without racking up large bills, too. Founding partner Enrique Dellafiori sets the tone; through smart utilisation of his global network, he has built up an impressive international clientele. Best known for his litigation pedigree, he also has proven negotiating credentials and continues to add successes to his CV – he recently combined with Mauro Dellafiori to oversee acquisition talks between client Empresas Carozzi and Unilever, achieving mutually positive outcomes. Mauro’s prodigious prosecution abilities are a key asset for the firm on both the national and intentional stages – he assists China Energy Investment Corporation and manages Heineken’s valuable Birra Moretti brand, but also has a knack for helping start-ups to carve out and maintain a market presence.
In 2019, Garay and Puga merged to form this stronger, more capable boutique. Its increased workforce now boasts deeper technical and legal know-how, which is tapped by global heavyweights such as Xiaomi. The standout trademark professionals are Jorge Garay Pérez and Hannelore Rennke, who come “highly recommended” for their “time and cost-efficient manner in prosecution”; they have lately put their skills to use on appeals for Argentina Rugby Union against Jaguar Land Rover. Garay Pérez is a versatile practitioner “who maintains excellent client relations by providing tailor-made strategies”; while trademark department coordinator Rennke is lauded for her “vast knowledge of the Chilean legislative landscape, which serves her well in registrations, oppositions and invalidity actions”.
With a passion for innovation, Jarry IP prides itself on its bespoke trademark and patent services. It seasoned lawyers, engineers and scientists understand the technical and legal niches of each client and make informed brand management and enforcement decisions in light of them. Under the stewardship of founding partner Allan Jarry, it provides forward-thinking assistance with entrepreneurial portfolios; and with smart tacticians such as trademark division director Susie Frey on deck, it knows how to manoeuvre them into competitive positions. The ensemble also stands out for its strategic partnership with start-up and investment-focused group DADNEO, which further adds to its prosecution and licensing capabilities. Its contentious offering is not to be underestimated either, particularly with Magdalena Barros in its ranks; the litigation and enforcement maven makes a well-deserved WTR 1000 debut this year.
Johansson & Langlois
Johansson & Langlois has been a respected competitor on the Chilean IP scene since 1945. Through continuous investments – both in its management software and in the rigorous training of its specialised attorneys – it renders wall-to-wall brand advice that is always attuned to market fluctuations. In trademarks, Max Montero and Christopher Doxrud are the key contacts. Montero “has a deep understanding of both regional and local practices” and shines in litigation; while Doxrud brings ancillary unfair competition and advertising law insights to the mix.
Larrain y Asociados
The compact IP department at Larrain y Asociados but draws on backing from the wider general practice to provide holistic, business-focused counsel in a flexible, cost-effective package. It is uniquely strong in plant varieties – a reflection of the technical dexterity of its professionals – and in the licensing and prosecution of IP assets. On the latter, it advises the likes of Telesat Canada and Tetra Pak; as well as Universal Music, for which it also handles domain name and corporate matters.
Mackenna Irarrázabal Cuchacovich & Paz
Full-service outfit Mackenna Irarrázabal Cuchacovich & Paz earns plaudits for its “deep subject knowledge, detailed advice and reasonable fees” – a combination which resonates with many Fortune 500 companies. The IP practice has enjoyed exponential growth over the past year, reflected in a growing client base and a series of stellar results, particularly in enforcement. Perennial WTR 1000 gold-tier advocate Rodrigo Marré has masterminded these wins, having put structures in place for the regional monitoring of fake goods and coordinated training for Chilean customs officials. Clients “really appreciate Marré’s practical and commercial approach. He is a devoted professional who gives the feeling of exclusive priority to each patron. His experience and broad expertise come in handy in crucial, often complex, registration and dispute scenarios”.
Marinovic & Cia
For those in need of no-holds-barred enforcement campaigns, Marinovic & Cia – initially founded as an anti-piracy boutique – is a prime pick. It has since broadened its horizons, however, meaning that rights holders can turn to it for wraparound advice interwoven with IP, corporate and tax law threads. Staying the course in the anti-counterfeiting realm is founding partner Antonio Marinovic, an authority in the area who has devised and implemented myriad successful seizures at a regional and national level. By his side is Luis Ignacio Olmedo, a prosecution and litigation ace who maintains close ties with local authorities and utilises them astutely to help shape trademark and copyright legislation.
Muñoz Jeanneret y Cia
Muñoz Jeanneret Alvarez y Cia breaks into the WTR 1000 on a wave of praise for its two-partner IP team, comprising Noëlle Jeanneret and Carmen Paz Alvarez. Operating within a full-service setup, they have won many fans for their intuitive grasp of clients’ financial and legal priorities and consistently on-point counsel. As one recipient comments: “For us, they are one of the best outfits in Chile. They provide permanent assistance throughout the process; they feel clients’ needs as their own; and they dispense deep-rooted advice which exhibits extensive subject and market knowledge”. Founding partner Jeanneret established this modus operandi: “A deeply intelligent and capable lawyer, she quickly understands technical aspects of an asset and produces coherent strategies which ultimately defend our interests and produce excellent results.” She makes a crack team with dynamic all-rounder Alvarez; recent activity has included various arbitrations and work for VANS on oppositions and filings.
Porzio Ríos García
“Porzio Ríos García has a longstanding reputation of excellence in the Chilean legal landscape and provides solid services to important, mostly international clients.” Established as a boutique by the venerable Marino Porzio, it has since expanded into commercial and tax law, providing joined-up counsel to help clients make optimum use of their IP as a business tool. Multitalented professional and polyglot Cristóbal Porzio also keeps the ball rolling and has been fundamental in maintaining the firm’s international footprint, as a familiar figure in the international legal community and a recognised IP scholar.
Sargent & Krahn
For more than 130 years, Sargent & Krahn has operated at the cutting edge of the Chilean IP space and continues to do so today, nurturing new talent and sharpening its expertise. A resourceful prosecution unit gets marks registered with remarkable speed; but the main draw is the potent enforcement and litigation team, which has hammered out favourable results in seminal branding disputes and “maintains strong connections with customs authorities”, fighting fakes for the likes of Red Bull, GlaxoSmithKline and LEGO. Inspiring leader Alfredo Montaner is widely regarded as “the best trademark lawyer in Chile – a well-rounded advocate with a deft strategic vision across the board”. Taking charge on the contentious front, Eduardo Lobos is commended for his “tight focus on customer needs. Well versed in the local laws, he is clear, succinct and precise in his advice over long stretches of time”. He and Montaner handle the firm’s most crucial accounts and have recently chalked up successes on behalf of sportswear manufacturer Hummel and jewellery company Muzo International. Completing a trio of superstars is Juan Pablo Egaña, a reputed academic “who produces cost-effective, strategic alternatives that ensure the protection of patents and trademarks”.
Competitors and service users alike “can only speak highly of Silva”. The multidisciplinary IP team is committed to staying ahead of the curve and adopts an innovative approach to practice: keeping abreast of developments in cutting-edge industries such as AI, it has also developed an advanced administrative system – SILVANET – which allows it take on large work volumes at a sensitive price point. This approach is advocated by dynamic captain Juan Pablo Silva. “One of Chile’s most eminent trademark attorneys, he is creative and vastly capable of protecting and enforcing a brand’s rights in unique ways”; dynamic players such as The Not Company have turned to him to establish a Chilean presence. In the role of international department chief, Francisco Silva is the key coordinator of inbound traffic from foreign patrons. Among recent highlights, he and Ricardo Montero finally registered the brand of metal band Metallica after two decades of proceedings. Montero is the man on the ground for domestic clients and a major asset to its litigation practice, which is headed by Andrés Grunewaldt Cabrera. Known for his methodical, hands-on approach, Cabrera’s background in the Chilean general prosecutor’s office affords him crucial insights and sets him up nicely to deal with big-name clients such as Levi Strauss.
“The consistent quality, efficiency and client-focused approach of Villaseca Abogados have kept it competing in the Chilean market for over a century.” This IP and corporate boutique truly knows the lie of the land and deftly constructs strategies which will go the distance in both prosecution and enforcement. The first name on the team sheet is that of luminary Sergio Amenábar, a former ASIPI president and reputed scholar; his vast subject-matter knowledge and extensive network of contacts have brought the firm to where it is today. Keeping it firing on all cylinders are Max Villaseca, Bernardo Serrano and Felipe Pavez. Villaseca provides robust leadership to the squad, both as managing partner and as trademark department head – his insight is appreciated across the IP spectrum. When disputes loom, Serrano and Pavez step up to the plate. Senior attorney Serrano has honed his negotiating skills over decades of practice; while enforcement and litigation chief Pavez produces arguments which are always alive to market developments.
Other recommended experts
“Rodrigo Cooper is renowned for his depth of knowledge and diverse skillset in all IP areas.” He flies the flag at Cooper & Cia. At Dentons’ Chilean outpost, Carolina del Río is applauded for her “vast talents and meticulous approach” to myriad trademark and patent mandates. Pablo Lineros has “strong technical knowledge and provides a personal treatment to each and every client”. The managing partner of boutique Lineros y Cia is frequently joined on prosecution and enforcement instructions by Catherine Muñoz, an astute all-rounder who makes her well-deserved WTR 1000 debut this year. “Ignacio Martínez has deep IP knowledge which serves him well in highly complex matteers – not only prosecution, but also criminal actions and enforcement of rights.” He operates out of AEM Abogados. Pablo Sáenz de Santa María recently founded “young and dynamic” boutique Sáenz de Santa María and has established a reputation for his thoughtful, business-oriented approach. Another new name in the rankings is Rodrigo Sammut, a Spanish attorney who has brought European standards of service to all areas of trademarks to Chile in recent years. He is the founding partner of fledgling boutique Andes IP.
- 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
- Rodrigo Velasco Alessandri - Alessandri
- Ariela Agosin - Albagli Zaliasnik SpA
- Paulina Bardón - Claro y Cia
- Rodrigo Cooper - Cooper & Cia
- Arturo Covarrubias - Covarrubias & Cía
- Juan Pablo Egaña - Sargent & Krahn
- Fernando García - Carey
- Eugenio Gormáz - Albagli Zaliasnik SpA
- Andrés Grunewaldt Cabrera - Silva
- Allan Jarry - Jarry IP
- Eduardo Lobos - Sargent & Krahn
- Antonio Marinovic - Marinovic & Cia
- Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
- Oscar Molina - Albagli Zaliasnik SpA
- Max Montero - Johansson & Langlois
- Ricardo Montero - Silva
- Santiago Ortúzar - Alessandri
- Cristóbal Porzio - Porzio Ríos García
- Bernardo Serrano S - Villaseca Abogados
- Francisco Silva - Silva
- Matias Somarriva - CMS Carey & Allende
- Rodrigo Velasco S - Alessandri
- Max F Villaseca - Villaseca Abogados
- Catalina Aldunate - Carey
- Magdalena Barros - Jarry IP
- Sofia Covarrubias - Covarrubias & Cía
- Carolina del Río - Dentons
- Enrique Dellafiori - Dellafiori Abogados
- Mauro Dellafiori - Dellafiori Abogados
- Christopher Doxrud - Johansson & Langlois
- Susie Frey - Jarry IP
- Jorge Garay Pérez - Garay IP
- Noëlle Jeanneret - Muñoz Jeanneret y Cia
- Claus Krebs - Claro y Cia
- Pablo Lineros - Lineros & Cia
- Paz Marambio - CMS Carey & Allende
- Ignacio Martínez - AEM Law Firm
- Catherine Muñoz - Lineros & Cia
- Luis Ignacio Olmedo - Marinovic & Cia
- Felipe Pavez - Villaseca Abogados
- Carmen Paz Alvarez E - Muñoz Jeanneret y Cia
- Hanne Rennke - Garay IP
- Pablo Sáenz de Santa María - Sáenz de Santa María
- Rodrigo Sammut - Andes IP
- Tabata Santelices - Carey
- Valentina Venturelli - Baker McKenzie
- Sergio Amenábar V - Villaseca Abogados
- Marino Porzio - Porzio Ríos García