Intellectual Property: Chile
The product of this recent merger has gone from strength to strength and is widely regarded as a top-tier IP firm. The team advises on the full range of IP matters, including trade secrets, intangible asset valuation and IP management, as well as registrations and litigation. Representative highlights include advising the 33 Chilean miners who were trapped in a San José mine in 2010 on the protection, licensing and sale of the IP rights relating to their ordeal. Clients say: “This is an outstanding and unique firm – the client service is excellent, the team meets every deadline given, and has broad commercial acumen. We always receive much more than we ask from them.” Guillermo Carey heads up the IP division and acts as lead counsel to the miners. Clients value his “precise and helpful advice, which has proved vital in the definition and growth of strategies for our company.” Sources recommend Fernando García, who specialises in e-commerce, industrial designs and patents. Since publication, Sebastián Palacios has left this firm.
This first-class IP specialist is a market leader. It handles the full spectrum of IP issues, including protected geographical indications and designations of origin, as well as patents, trade marks, litigation and related regulatory aspects. In recent highlights, the team successfully sought an extension of the validity period for key patents on behalf of UK-based pharmaceutical group sanofi-aventis following delays in proceedings enforced by the Chilean trade mark and patent office. Practice head Alfredo Montaner is singled out for his strength in trade marks. Juan Pablo Egaña heads up the patent department and led the team on the sanofi-aventis case. He is praised for his excellent command of English and strong working relationships with clients. Senior associate Rodrigo Lavados focuses on copyright and trade mark matters and is gaining a strong reputation in the market. Since publication, he has relocated to the US temporarily to undertake an LLM at Harvard Law School.
Sources recognise that this long-standing firm has a growing profile in the IP sector. The team handles copyright, domain names and litigation, as well as industrial property issues such as technology transfer andfranchising. It successfully represented holding company Danjaq – which owns the rights to the James Bond and 007 brands – in litigation regarding the protection of these trade marks. Sources say: “They give the best client service that can be expected from a firm.” Managing partner Rodrigo Velasco S focuses his practice on competition law, domain names and trade marks. Rodrigo Velasco A is hotly tipped as a future star in the IP arena. Senior associate Loreto Bresky led the Danjaq case and specialises in competition law, trade marks and litigation. Peers recommend senior associate Felipe Schuster for his particular niche in copyright and entertainment law.
The IP division of this well-known Chilean firm offers the full range of services, including software protection and infringement control. It represents clients in a range of copyright infringement, trade mark registration and unfair competition matters. Sources also draw attention to the team's strong litigation skills. Practice head Felipe Claro impresses sources and is described as “an excellent lawyer and litigator.” Senior associate Paulina Bardón focuses on the protection of intellectual property rights at an international level.
This traditional Chilean outfit specialises in IP and corporate matters, and is seen as a major player in the IP arena. The firm covers a comprehensive scope of IP services, as well as other areas such as sanitary and biotechnology research and related litigation. The team acts as counsel to household names such as Adobe, Cinemark and Colgate-Palmolive, and recently represented Microsoft in obtaining patents for its IT products. Managing partner Sergio Amenábar is a highly revered figure in the IP sphere. He led the team advising Adobe on the registration of its Photoshop trade mark. Max Villaseca heads up the domain names practice group at the firm and is currently serving as the president of the Chilean Association of Intellectual Property (ACHIPI). He acted for Cinemark in opposing an application for the registration of the domain name cinemark.cl. Bernardo Serrano leads the firm's trade mark department and is considered a great asset to the team. He oversaw the Cinemark case with Max Villaseca.
This compact firm deals exclusively in IP issues and enjoys a glowing reputation in the Chilean market. It is especially noted for its strength in patent work. “This firm is great: it stands out for its proactivity and one-on-one advice,” enthuse sources. Clients also highlight the firm's services as good value for money. Andrés Echeverría is a much-respected figure in the IP sector. He serves on the committee for the Chilean Network Information Centre, the body in charge of with registering .cl domain names. Felipe Langlois' main areas of expertise are patents and business administration, while Max Montero focuses on trade marks, infringements and litigation.
The IP department of this accomplished firm handles a wide array of contentious and non-contentious IP matters. The team represents both local and international clients, and recently advised Amazon.com in connection with its trade mark and patent portfolios in Chile. Other representative clients include Danone, pharmaceutical company Almirall, and Hong Kong-based pesticide producer Rotam Agrochem. Department head Marino Porzio is a leading name in the field and continues to serve as an adviser to the Chilean government for all IP-related issues. Rafael Covarrubias and Cristóbal Porzio also stand out in the market and focus their practice on trade marks, patents and technology transfers. Associate Bernardita Torres is a growing name in the market for her copyright, trade mark and domain name expertise.
This IP specialist enjoys a strong reputation in the market. In spite of the recent loss of its patent team, peers note that the firm is ever-present in trade mark and copyright matters, and is now expanding its practice to cover internet-related IP issues such as domain names. The team recently represented O'Neill and obtained a final ruling by the Supreme Court which nullified trade marks of the same name which have been registered since the 1980s; the successful ruling ended a ten-year litigation proceeding. The firm has also presented a pioneering appeal to register the Juan Fernández lobster as a Geographic Identity (GI) in Chile. This is the first time that a request of this type for a sea product has been made in Chile. Clients say: “This is a great firm – very experienced, highly responsive, with top client service and commercial awareness.” Gonzalo Sánchez heads up the new technologies and copyright department, and initiated the GI request. Managing partner Juan Pablo Silva was the lawyer in charge of the O'Neill case. Sources describe him as “specific, accurate and confident.” Clients rate Francisco Silva as a “very knowledgeable lawyer with a good commercial grasp.” Rodrigo León leads the firm's copyright and patent division and enjoys a strong reputation in the market.
This mid-sized firm offers a broad array of IP services which complement its established corporate and litigation practice groups. The team typically represents high-profile international clients such as Sony Playstation and Harley Davidson. It continues to act as local counsel to Wal-Mart and is responsible for the retail giant's entire trade mark portfolio in Chile. Newly appointed partner Ariela Agosin is the primary contact for clients.
Sources commend this boutique as highly active in the local IP market. The team provides advice on both contentious and non-contentious issues, including licensing, layout designs and plant varieties. Andrés Melossi Jiménez is widely regarded as an excellent litigator in the field and is described by peers as “hard-working and intelligent.”
The IP department of this compact firm has a special niche in software and technology. The firm acts as local counsel for Microsoft, which it recently advised on the regulatory aspects of its software platforms. Clients praise the team's clarity and pragmatism in giving advice. Sources say: “The lawyers and support staff are always prompt and attentive in handling issues for their clients, and are highly committed to finding amicable solutions to move forward in the face of deadlocks.” Macarena López heads up the practice and impresses sources with her broad training and expertise in IP. “She is very analytical, has a great customer focus, and is a tough and skilled negotiator,” according to clients.
The IP and technology department of this firm attracts an impressive client portfolio which includes prominent companies such as Kingston, Xerox and Orange. The team excels in the licensing and protection of software platforms and databases. It represents prestigious names such as Google, which it recently successfully defended in court in connection with a criminal complaint brought against one of its local representatives. Clients draw attention to the team's high specialisation in the IP field as well as its practical and innovative solutions. Sources say: “The firm is characterised by its efficiency and response time. It gives its clients the utmost confidence in delegating their affairs.” Founding partner Claudio Magliona is a firm favourite with clients, who highlight his 24/7 availability and business-oriented advice. Sources are effusive in their praise and comment that “he is an extremely talented lawyer who has a comprehensive knowledge of all the issues in this sector and of the best way to deal with them.”
This all-round firm offers wide-ranging services in IP prosecution and portfolio management. It also handles a steady volume of litigation cases in the IP sector. In recent highlights, the team brought a successful action to reclaim the domain name Transformers.cl; the domain name had been registered locally by an individual in spite of the trade mark's registration in Chile by brand owner Hasbro. Rafael Pastor is the key contact for clients in this sector.
This IP practice group has offices throughout Latin America, as well as in Spain and Portugal. Sources highlight the firm's growing market share and note its particular prowess in patents. Carolina del Río is the primary contact for all IP issues.
This specialised IP boutique offers services in trade marks, patents, dominations of origin, copyright, plant varieties and sanitary registrations. Clients rate the firm for its high standard of service. Founding partner Rodrigo Cooper has extensive experience in the IP sphere and enjoys a strong reputation in the market.
The IP division of this full-service firm is principally active in patents, copyright, trade marks and domain names, as well as a number of IT-related matters. The team also litigates in a high volume of infringement cases. Felipe Garay is noted for his experience in trade marks.
This compact firm provides an array of legal services, including IP, competition, labour and employment, and litigation. The IP team focuses on trade mark and domain name prosecution and enforcement. It is popular with clients, who say: “The firm is highly responsive and communicates in an efficient and intelligent manner. It provides excellent client service and practical advice.” Rodrigo Marré is lauded for his strengths in trade marks. According to sources, “Rodrigo’s practice evidences not only the legal proficiency expected of a high-calibre lawyer, but also an intimate knowledge of the industry and an impressive capacity to manage client expectations. His resourcefulness and personal care permeate his entire team, assuring the client that their matters are always in the best hands.”
This firm handles a range of transactional, litigious and corporate issues related to the IP sector. It is perhaps best known for its anti-counterfeiting capabilities and has a growing reputation in the market. Antonio Marinovic is the main point of contact for clients.
is a respected IP litigator at Puga Ortiz and handles a diverse range of IP-related services, such as patent and trade mark work. Juan Alberto Díaz Wiechers
of DíazWiechers focuses exclusively on IP law, with a particular emphasis on plant varieties. He represents a number of Dutch-based and New Zealand-based clients. Soledad Castro
stands out for her trade mark expertise at Castro & Sáinz. She is also active in litigation and unfair competition matters. Noelle Jeanneret
of Barrios Muñoz Jeanneret y Cia. has a growing profile in the IP sphere and handles an impressive volume of non-contentious and contentious IP work.
Since publication, Sebastián Palacios has moved in-house.
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23 May 2013: Chambers USA Awards for Excellence 2013, New York
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29th May 2013: GC Seminar, New York Going Mobile: IP and Privacy Considerations
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9 September 2013: Chambers Latin America Awards 2013, Miami
10 September 2013: Launch of Chambers Latin America 2014, online
3rd October 2013: Chambers Bar Awards 2013, London
10 May 2012: Chambers Europe Awards for Excellence, Amsterdam