Francisco Carey
Partnerfcarey@carey.cl
+56 2 2928 2638
Partner of Carey and co-head of the firm´s Intellectual Property and Information Technology Group. His practice focuses on trademark and patent procedures and prosecution; licensing, distribution and franchise agreements; and anti-counterfeiting.
REPRESENTATIVE EXPERIENCE
- MercadoLibre Chile, one of the most important e-commerce companies in the region, on a protection strategy of its trademark portfolio in Chile.
- Nestlé, a Swiss multinational, and the world's largest food & beverage company, on the filing and prosecuting of more than 50 new patent and industrial design applications in a wide range of technology, over the last year.
- Universidad Católica, one of the most prestigious universities in Chile, which has consistently been awarded the university with the largest patent portfolio in Chile, on protecting its patent portfolio in the country, helping them with its transferring department and the implementation of a technological consortium with other five universities.
- PepsiCo on a legal claim filed against the decision of the Regional Ministerial Secretariat of the Metropolitan Region, which prohibited the commercialization of certain PepsiCo products under Law 20,606 on Food Labeling.
- R… and Everything Else on the filing of several trademark actions against Brand Ventures to recover the Rusty trademark and design. The Panamanian company Brand Ventures registered the trademark Rusty in bad faith, and we advised on the design of a strategy to cancel the registered trademarks, oppose their pending applications and secure the registration of the trademarks in the name of the client.
- The legal heirs of Mexican artist Frida Kahlo on their defense in a lawsuit against Frida Kahlo Corporation, which breached an agreement with the family and filed the trademark Frida Kahlo for registration in Chile.
- PepsiCo on a successful defense against a complaint filed by the National Consumer Service (SERNAC) for the use of figurative marks on the packaging of certain PepsiCo products. The case was resolved favorably for PepsiCo.
- Nestlé on a successful defense against a complaint filed by the SERNAC for the use of figurative marks on the packaging of certain Nestlé products. The case was resolved favorably for Nestlé.
- Crocs on the application proceeding of a tridimensional trademark to distinguish the brand's particular shoe design. This is the first procedure since the validity of the law that recognizes this type of trademark in Chile.
- Skechers, an American multinational footwear company, on opposition actions against trademark applications that contain the famous and well-known “S” label and intend to protect clothing and footwear in class 25.
AWARDS AND RECOGNITIONS
- Recognized as WIPR Leader in Patents, Technology and Trademarks, World IP Review (2020, 2021 and 2022).
- Recognized in Intellectual Property, Chambers Latin America.
- Recognized in Intellectual Property, The Legal 500.
- Recognized in Intellectual Property, Latin Lawyer 250.
- Recognized in Intellectual Property and Information Technology, Best Lawyers.
- Recognized in Intellectual Property - Patents and Trademarks Prosecution and Litigation, Plant Variety Protection, and Anti-Counterfeiting, Leaders League.
- Recognized as Best Individual Lawyer in Intellectual Property: Trademarks (2014 and 2015) and in Intellectual Property: Copyright (2019 and 2022), Client Choice.
- Recognized in Patent Strategy & Counseling, Trademark Litigation and Patent Prosecution, IP Stars, Managing IP.
- Recognized in Patents, IAM Patent.
- Recognized in World Trademark Review (WTR).
- Recognized in Intellectual Property, Top Ranked Legal.
ACTIVITIES AND MEMBERSHIPS
- Chair of the Alliances Subcommittee of the Brands Restrictions Committee and member of the Global Advisory Council (2022-2023); former Chair of the Anticounterfeiting Committee, Latin America and Caribbean Subcommittee (2016-2018), International Trademark Association (INTA).
- Current member and former member of the board, Chilean Industrial Property Association (ACHIPI) (2017-2020).
- Member of the Chilean Bar Association.
- Member of Marques.
- Member of the International Federation of Intellectual Property Attorneys (FICPI).
- Member of the Inter-American Association of Intellectual Property (ASIPI).
- Foreign associate, Lexis Nexis (2006-2007).
PUBLICATIONS
- Author of the Chilean chapter in "Legal Updates on Trademark Law in Latin America", Wolters Kluwer (2018).
EDUCATION
- Law, Universidad de los Andes.
- LL.M., Duke University (2006).
ADMISSIONS
- Chile (2004).
LANGUAGES
- Spanish.
- English.
