This achievement is a testament to our dedication, expertise, and commitment to providing exceptional services to our clients. There are only two firms in this Tier 1 2023 Trademark Prosecution category in Finland.
Our team of experienced patent and trademark attorneys has worked tirelessly to ensure that our customers receive the highest quality of legal representation in all aspects of intellectual property law. We take great pride in our ability to provide tailored solutions that meet the unique needs of each of our clients.
Managing Director Karri Leskinen commented that “Being recognized as a Tier 1 firm in this IP Star survey is a significant honor for us, and we are deeply grateful to our clients for their trust and support. We will continue to strive for excellence in everything we do and remain committed to delivering outstanding results for our clients. We want to thank our clients and devoted personnel for their continued support”.
In the past, trademark owners have repeatedly tried to hold online marketplaces liable for trademark infringements that take place on their platforms. Earlier the matter has circled around the interpretation of the term “use”. The term is not further explained in the EU Trade Mark Regulation. Some manners of use are mentioned, but the Regulation does not contain an exhaustive list of conduct or actions to be described as trademark use. So far, the operator of a marketplace or platform has been liable for any infringement only if the trademark has been used. Previous decisions have confirmed that the mere operation of an online marketplace is not sufficient to be considered trade mark use.
Facts of the case
In a landmark decision for trademark owners, (CJEU 22.12 2022, Christian Louboutin v. Amazon, C‑148/21 and C‑184/21), the French luxury shoe designer Christian Louboutin accused Amazon of a uniform and misleading way of displaying any search results and products in trademark infringement proceedings before the courts of both Luxembourg and Brussels. The action was brought as Amazon regularly displayed advertisements for goods which infringe Louboutin’s iconic red-soled stiletto, which is registered as both an EU and Benelux trade mark.
Mr. Louboutin argued that by displaying advertisements of shoes bearing a red sole on its online stores as well as by stocking, shipping and delivering the infringing goods to the end consumers, Amazon had used his trade mark without his consent. Louboutin claimed that while Amazon was not selling the counterfeit products directly themselves, they were involved in the distribution, storage and advertising of those products as well as in presenting the infringing products on its platform in the same manner as products sold under Amazon’s own name. Both national courts decided to suspend their proceedings until the CJEU had answered their preliminary questions.
The questions referred to the CJEU were whether Amazon could be held directly liable for using the trademark, where a third-party seller places an advertisement for counterfeit products on the Amazon platform. Could such third-party trade mark infringements constitute “use” of a trademark?
In its judgement, the CJEU has finally given guidelines for assessing the liability of an online marketplace. The CJEU held that operators of online marketplaces could be held directly liable for third-party advertisements. Users could mistakenly think Amazon themselves are selling shoes on behalf of Louboutin, particularly when Amazon displays its own logo on the third-party sellers’ advertisement, and also stores and ships the shoes to their end users.
Multiple factors are listed in the decision as examples of circumstances in favour of online platform liability:
Uniform presentation of all offers by displaying platform’s own advertisements alongside those of third parties and adding the logo of the online marketplace to those advertisements.
Platform operator offers additional services to its third-party sellers (presentation of advertisements, storage and dispatch of goods).
Offering customer care services (responding to buyer enquiries, handling returns) to third-party sellers.
Labelling your own as well as third-party goods as “bestselling”, “most requested”, “most offered” without distinguishing between goods according to origin.
Practical implications of the decision
The CJEU has provided widely followed and useful guideline as to when online marketplace operators should be held liable for trademark infringement by third parties. The decision allows trademark owners to take action, not only against the original infringers, but also against those who assist in the online distribution of infringing products. Brand owners will welcome this decision in their ever-ongoing fight against counterfeit goods online. It signals a departure from the earlier approach, where the operator of an online marketplace was considered not to be “using” the infringing trademarks.
Amazon now has a responsibility to ensure that it can no longer just stand by and allow trademark infringement to take place on its own platform. Online platform providers need to consider how their marketplaces will be perceived by users and it should be evident when products are being sold directly, and when they are sold by a third party. The decision also shows the risks of allowing third-party vendors to advertise and sell (counterfeit) products via online marketplaces.
We will of course have to wait and see how the national courts will apply and interpret the decision. It is, however, likely that the decision will have clear-cut implications for Amazon’s own business. The decision should prompt also other online marketplace operators to re-design their websites and carefully consider the layout of their platform to ensure that users are able to distinguish between goods sold under the operator’s own name and those sold by third parties on the same marketplace.
Laura Roselius works as an IP Lawyer and Partner at Boco IP.
World Trademark Review (WTR 1000) rankings for 2023 have just been published and there is a lot to celebrate as Boco IP is again ranked as one of the leading trademark firms in Finland.
Boco IP’s trademark practice and IP Lawyers are recognized in the 2023 ranking with the following words: “Tapping into its international network, Boco IP can solve all intellectual property issues, no matter where in the world the problem lies. The team are super organised, efficient and professional – they are simply irreplaceable.”
“Partners Peter Åkerlund, Elina Heikkilä and Laura Roselius offer A–Z IP assistance to their loyal clients. The team have filed impressive numbers of applications this year while also negotiating favourable agreements to protect IP rights. Heikkilä is “a great communicator and efficient in reacting to possible infringements of our marks; she provides detailed legal advice on how to react, so we can make the best decisions”. While Roselius earns enthusiastic praise for being “supportive at every stage of the process. She is a pleasure to work with, as she is responsive, pragmatic and clear cut in her legal advice.”
The results once again confirm Boco IP’s position as a high-quality expert in the trademark field.
World Trademark Review WTR is an independent publication in the Intellectual Property field that researches and ranks leading trademark professionals in over 80 jurisdictions.
Boco IP’s IP trademark professionals can be reached at the following addresses:
Elina Heikkilä IP Lawyer, Partner elina.heikkila@bocoip.com +358 9 6866 8415 LinkedIn
Jerry Härkönen IP Advisor, IP Lawyer jerry.harkonen@bocoip.com +358 9 6866 8433 LinkedIn
Mari Nieminen IP Legal Trainee mari.nieminen@bocoip.com +358 9 6866 8431 LinkedIn
Laura Roselius IP Lawyer, Partner laura.roselius@bocoip.com +358 9 6866 8456 LinkedIn
Peter Åkerlund IP Lawyer, Partner peter.akerlund@bocoip.com +358 9 6866 8413 LinkedIn
IAM Global Leaders list ranks the world’s top private patent practice experts. As per the IAM Global Leaders announcement “To be considered to be included in the guide, individuals must be ranked in the gold tier of the IAM Patent 1000 – the market-leading annual directory that identifies the top law and attorney firms and individuals in the world’s most significant patent jurisdictions.”
Chairman of the board and Partner Jonna Sahlin consults clients in the field of chemistry in prosecution, in oppositions as well as different kinds of IPR strategy matters. Her ability to provide solid, well-founded advice in combination with her collaboration skills are often complimented by her clients.
As a former Chairman of the Association of Finnish Patent Attorneys (2010-2013) Jonna has actively contributed to the patent field in Finland. She is a qualified European Patent Attorney and since 2017 council member of epi as well as member of epi’s Professional Conduct Committee. In 2020 Jonna was appointed as an External Expert member in the Finnish Market Court.
Jonna Sahlin
Karri Leskinen
Managing Director and Partner Karri Leskinen runs the company, but he also devotes great deal of his time to client work, especially opposition work and patent litigation cases as well as statements on patent rights in general. His deep knowledge in patent matters is highly appreciated, and clients turn to him for his perception of difficult patent law interpretation questions. Karri has a wide-ranging experience in working as a patent attorney and clients seek for his advises on IPR strategy issues, technology transfers and M&A cases, where IP issues are relevant. Karri is a qualified European Patent Attorney, and he also acts as an expert member of the Finnish Market Court (specialized IP Court).
The criteria for the list are that this small group of merited patent professional has expertise and experience related to creating, protecting, managing, transacting and enforcing critical patent rights and they are able to innovate, inspire and go above and beyond delivering value to clients.
European Patent Attorney and Partner Tomi Salter deals extensively with the protection of various technical solutions, in particular he works with patent prosecution of various machines and equipment, as well as inventions related to control thereof. In addition, he provides reports related to patentability of inventions and freedom to operate, as well as infringement and invalidity.
IP Lawyer Jerry Härkönen is an EU Trademark and Design Attorney. He supports both Boco IP’s Sales and Marketing and IP Legal teams. He has experience from several IPR companies and I specializes in brand protection in a variety of ways. In addition, he is an active IPR-trainer and lecturer.
Tomi Salter and Jerry Härkönen Rising Stars in MIP IP Stars 2022.
Earlier we informed that four of our professionals were chosen for the IP Stars individual ranking list as follows:
Chair of the Board, Partner, European Patent Attorney Jonna Sahlin assists in various matters related to intellectual property rights and strategy, especially in the fields of chemistry, process technology, medicine, and diagnostics. In addition to prosecution of applications, Jonna, drafts oppositions, freedom-to-operate analyses, and statements on the interpretation of patents. Since 2017, Jonna has represented Finland as a council member of the Institute of Professional Representatives before the European Patent Office (epi) and as a Finnish member of the epi’s Professional Conduct Committee (PCC).
Partner, European Patent Attorney Christian Westerholm drafts patent applications and takes care of the prosecution of patent applications. He also handles opposition proceedings before the Finnish Patent Office and the European Patent Office and he has an extensive experience of oral proceedings at the European Patent Office. Christian handles utility model applications as well as design rights applications and prepares statements for various kind of IPR’s. He also has experience in IPR licensing negotiations and acquisitions.
Managing Director, Partner, European Patent Attorney Kari Leskinen works as both CEO and patent attorney. Karri is active in the design and implementation of clients’ IPR strategies. With regard to assignments, he has focused especially on the handling of opposition cases in Finland and at the European Patent Office. He acts as an expert in patent litigations, draft opinions and advises on patent law matters.
Partner, IP Lawyer Peter Åkerlund helps clients to create strategies for the protection of brands, designs and other intangible assets. Peter conducts risk analysis’ related to the use and registration of trademarks and handles trademark registration and design protection worldwide. He also advises on contractual matters related to Intellectual Property and acts as clients’ representative in negotiations, and deals with trademark and design infringements, prosecutes trademark oppositions and trademark and design cancellation procedures, and handles disputes related to domains.
More information about the results can be found here:
Our European Patent Attorneys Jonna Sahlin, Marja Liisa Autti, Sini-Maaria Mikkilä and IP Lawyers Laura Roselius and Elina Heikkilä are present in London to receive the award.
“This feels absolutely fantastic” says Chairman of the Board Jonna Sahlin when the award has been handed out. “We have worked very hard over the years, and we are extremely happy that our customers value Boco IP this high. I would like to thank both our customers but also our devoted personnel who have met our customers’ expectations and made customer satisfaction this high.”
What are the Global IP Awards? “The Global IP Awards recognise the outstanding achievements of law and attorney firms in litigation, prosecution and transactional work during 2021/2022. In total, 143 awards will be given to leading lights of the industry, highlighting the depth and spread of IP expertise available to corporate teams the world over.”
We are honored and very pleased to announce that for the first time ever, our firm is appraised as a leading firm in Leaders League for patent prosecution in Finland. Five of our experts: European Patent Attorney Karri Leskinen, European Patent Attorney Jaana Hämäläinen, European Patent Attorney Sini-Maaria Mikkilä, European Patent Attorney Jonna Sahlin and European Patent Attorney Christian Westerholm were listed in the ranking.
Boco IP was also ranked a Leading firm in trademark prosecution. Here is the link to both rankings:
Leaders League specializes in putting together rankings and market research, used by a wide range of corporations and executives when making their decisions.
Their rankings cover the entire business chain and serve as an up-to-date and essential guide for navigating international markets.
Boco IP’s patent professionals can be reached with the following contact details:
We are honored and very pleased to announce that for the first time ever, our firm is appraised as a Leading firm in Leaders League for trademark prosecution in Finland. Five of our experts: IP Lawyers Elina Heikkilä, Jerry Härkönen, Pamela Lönnqvist, Laura Roselius and Peter Åkerlund were listed in the ranking.
Boco IP was also ranked a leading firm in patent prosecution. Here is the link to both rankings:
Leaders League puts together rankings and market research
Leaders League specializes in putting together rankings and market research, used by a wide range of corporations and executives when making their decisions.
Their rankings cover the entire business chain and serve as an up-to-date and essential guide for navigating international markets.
Please do not hesitate to contact Boco IP’s trademark professionals with the following contact details:
According to the IAM, Boco IP “has had another banner year: it has seen an uptick in EPO matters, particularly from international clients; moved over to a new case-management platform which allows its IP experts to spend more valuable face-to-face time with clients; and onboarded several new practitioners to an already deep bench.”
As described by IAM, the firm’s Managing Director and Partner, Karri Leskinen, is entrusted with ”the most complex and super technical matters . You can undoubtedly rely on him to deliver work of the highest quality and the cooperation is guaranteed to be smooth too.” Jonna Sahlin “is appreciated by patrons for her ability to communicate clearly, explain complex technical arguments to judges in a way that is easy to understand, and provide commercially insightful analyses that are vital to those looking to mitigate risk”. Jaana Hämäläinen “really gets to grips with the technology behind an invention and looks to build a great rapport with inventors, and as a result she brings great value to the patents she drafts.”
”For those looking to overcome seemingly insurmountable oppositions hurdles, Christian Westerholm is a wise choice, while industrial machinery expert Sini-Maaria Mikkilä is a big-picture thinker with a great eye for detail and a tremendous knowledge of patenting processes across multiple jurisdictions. As a former senior IP manager at Nokia, Marja-Liisa Autti has an intimate understanding of the telecommunications industry and knows the best way forward in research and development (R&D) settings.”
Anu Keinänen is described to be “extremely diligent and insightful” who is ”exceptionally talented at drafting applications due to her ability to cooperate well with inventors, understand the invention at its core, and formulate claims precisely and clearly.”
Commenting on the results, Managing Director and Partner, Karri Leskinen said, “We are more than delighted about the results. Sincere thanks to our clients for the reviews they gave to the IAM researchers, and especially our devoted personnel for all the work that we have done together over the years.”
Jonna Sahlin, is European Patent Attorney and an Authorized Patent Attorney in Finland. She has also successfully completed the CEIPI course on Patent Litigation in Europe. She consults clients on matters relating to intellectual property and IP strategy and prosecutes Finnish and European patents in the fields of chemistry, biochemistry, pharmaceuticals, diagnostics, food industry, process technology and biofuels. She also handles opposition and appeal cases and has been involved in patent litigation cases as well as Finnish national utility model registration nullity actions. She further conducts freedom-to-operate analyses and prepares opinions on the interpretation of patents. She has been employed at Boco IP since 1998.
The list, first published in 2013, recognizes “senior female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year.” The list is put together based on feedback and recommendations from clients and peers in the IP industry and clients and reflects to importance of the selected practitioners to the success of their firms.
