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Preliminary trademark searches

Preliminary searches define the risks associated with the registration and use of a trademark.

What

With the help of our experts, it is worthwhile to map out the risks related to the protection and use of trademarks in a timely manner through preliminary trademark searches. Without a prior investigation, there is a risk that you will infringe  marks or trade names previously protected by others.

Why

Legal risks associated with the trademarks may at worst prevent the protection of your trademark. Legal risks associated with the use of the mark may result in a need to change your own trademark, or prevent its use in some countries.

To minimize the risks, it is a good idea to do a preliminary search before using the mark. The purpose of the search is to determine which similar marks or trade names related to similar products or services have previously been protected. Preliminary trademark searches should also be carried out when a mark already in use is introduced in, or sought to be protected in new countries.

Our preliminary search determines the types of products and services the mark is intended to be used for as well as the countries in which the mark is to be used. Our written search report also includes a recommendation for further action.

The preliminary examination also assesses whether the mark is distinctive, i.e. that it does not describe the characteristics of the products to be protected. The distinctive character of a mark is a key requirement for the registrability of the mark.

Our preliminary trademark searches provide valuable information about the risks associated with registering and using a trademark. With the help of preliminary trademark searches the client avoids selecting a trademark with significant risks associated with its use or registration.

The information obtained from a preliminary search is especially valuable when planning the appearance and the exact range of products and services a trademark is to be registered for.

A preliminary search also provides valuable information, even though the brand has already been launched. The result of the search enables informed decisions to be made about where and for which products and services the trademark should be protected in order to reduce risks. The search can also produce valuable information in which countries the mark is not recommended to be used.

Contacting
The client is searching for a new name for its product, service or company name and contacts Boco IP’s trademark expert.
Before the search
Boco IP's trademark expert and the client will together define the products (goods and/or services) and the countries where the client expects in the near future to sell products with the mark. Simultaneously, the depth of the search is decided.
Search, analysis and reporting
Boco IP’s expert uses database tools to search the official trademark and company name registers as well as different web-platforms and analyzes similar findings. The analysis focuses on the risks that the findings may pose when using the researched name. Boco IP's expert will compile a report on the results in which the findings are listed along with risk analyses. The report will also include advice on how to proceed with registering the client’s mark.
Meeting and next steps
If necessary, a final meeting will be held after the report has been completed, in which the results of the research will be reviewed and further measures will be agreed upon.

Pricing examples

Please note that the price estimate for a trademark application depends in part on the amount of time it takes to complete the application. This is affected, for example, by how accurately the products and services covered by the mark are described, whether there are ready-made images of the mark and how much expert preparation and consultation is required.

Word mark, EU area, BocoMatch search

Rapid preliminary search of the freedom to use and register a trademark in the EU area. Attention is on previous trademark registrations that contain an identical word and concern similar goods or services. The study is carried out using the Corsearch ExaMatch tool.

Price estimate 220 € + VAT
Word mark, EU area, BocoCheck search

Extensive prior examination of the freedom of use and registration of the trademark in the EU area. Attention is on previous trademark registrations and business names containing identical or similar words concerning similar goods or services. The research is carried out using the Corsearch ExaMatch tool.

600 € + VAT

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Jonna Sahlin
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Jonna Sahlin profiilikuva

Jonna Sahlin

European Patent Attorney, Chairman of the board, Partner

I am happy to advise and assist in various matters related to intellectual property rights and strategy, especially in the fields of chemistry, process technology, medicine, and diagnostics. I like problem solving and interaction with customers and colleagues, and I think the best results are usually achieved when the cooperation works smoothly. I handle patenting of inventions both in Finland and internationally, and in addition to prosecution of applications, I, among other things, also draft oppositions, freedom-to-operate analyses, and statements on the interpretation of patents.

I have been employed by Boco IP since 1998 and, after various tasks over the years,  I nowadays mostly work with patent matters. Since 2017, I have 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).

Education
M.Sc. (chemistry, food technology, polymer technology)
Languages
Swedish, Finnish, English, German
Activities
Expert member of the Market Court Expert member, European Patent Institute (board member 2017-2023), Finnish Patent Attorneys Association (SPAY, chairman 2010-2013), active in co-operation with Nordic patent attorneys in the field of chemistry, AIPPI, FICPI, UNION, Finnish Association of Industrial Law (STY) and Finnish Chemists Society (SKS), swimming, running, downhill skiing, gardening
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Boco IP - Marja-Liisa Autti profiilikuva

Marja Liisa Autti

European Patent Attorney, Partner

I mainly deal with patenting in the fields of information technology, electronics and radio technology. The invention of many of the patent applications I have handled has been implemented as a computer program or software, but I am also no stranger to mechanical devices. In many cases, the inventions are combinations of devices and their control or processing of signals obtained therefrom. My job includes drafting patent applications, preparing office action reports and office action responses, handling opposition matters as well as performing novelty searches and technology mappings. I work as an authorized patent attorney, authorized by the Finnish Patent and Registration Office PRH. Prior to my career as a patent attorney, I gained 15 years of experience in patenting, IPR strategy and patent portfolio management in telecommunications field, as well as previous experience in research and development in the telecommunications and electronics industry. I have been employed by Boco IP since 2014.

Education
M.Sc. (electrical engineering: applied electronics, metrology, bioelectronics)
Languages
Finnish, English, Swedish
Activities
Orienteering, trail running, swimrun, geocaching, piano, gardening, genealogy
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Boco IP - Nina Virolaisen profiilikuva

Nina Virolainen

European Patent Attorney

I assist and advise our clients in protection of inventions in the fields of chemistry and biochemistry including diagnostics, molecular biology, microbiology, immunochemistry and process chemistry. My area of expertise is also the protection of biotechnology, bioenergy and cleantech processes and solutions. In addition, I assist our clients with employee’s inventions, competitor tracking, freedom to operate assessments and novelty searches.

I have worked in the patent industry since 2017. Before that, I have several years of R&D experience in developing and implementing innovative biotechnology and environmental technology solutions, both as a university researcher and at a startup company. I got interested in the IPR industry after being an inventor in patent applications myself, so I have multifaceted experience in turning research into protected inventions that add value to their owner. The best part of my job is getting a glimpse into pioneering research in many different fields!

Education
PhD (Environmental Biotechnology), M.Sc.
Languages
Finnish, English, Swedish, German
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Peter Åkerlund

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I have a legal background and authorized to represent clients at the European Union Intellectual Property Office (EUIPO) and the Finnish Patent Office, and at Finnish courts. I help clients to create strategies for the protection of brands, designs and other intangible assets. I conduct risk analysis' related to the use and registration of trademarks, and handle trademark registration and design protection worldwide. I also advise on contractual matters related to Intellectual Property and act as clients' representative in negotiations, and deal with trademark and design infringements, prosecute trademark oppositions and trademark and design cancellation procedures, and handle disputes related to domains. I have worked at Boco IP since 1999.

Education
LL.M., Master of Laws trained on the bench
Languages
Swedish, Finnish, English
Activities
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Sini-Maaria Mikkilä profiilikuva

Sini-Maaria Mikkilä

European Patent Attorney

I am happy to help with all kinds of IP matters, and especially with technical inventions, their protection by patents and utility models in Europe and internationally, and with matters related to defending IP rights, such as oppositions, appeals and infringement matters. I have worked as a patent attorney since 2008 and during the time I have helped to protect and defend a wide variety of inventions, but I am most experienced in protecting inventions related to machines and equipment and hydraulic, electrical and software control of thereof, as well as components and geometries. I am also interested in hydraulics, measurements, automatic detection, and different types of sensor applications as well as user interfaces and energy technology applications.

I really like the versatility of patent attorney's work. In addition to patent prosecution, I am happy to advise clients on IP issues, such as planning IP and protection strategies, and employment invention matters. I find it interesting to analyse similarities and differences between solutions, and I like preparing expert opinions related to scope of protection and suspected patent infringement cases, for example. I also conduct novelty and technology searches. It is also important for me to increase IP awareness and, therefore, I also like to organize IP trainings and IP workshops.

I would like to encourage you to contact me especially if you work within an industry like industrial machinery or equipment, mobile machinery, automotive industry, mining, consumer products, paper and forestry, public services, freight and logistics, health technology, measuring equipment and technology, renewable energy, or telecommunications. However, please feel free to contact me in any other IP matters, as I am always happy to help you to find the best expert on any matter, whether it is me or someone else.

I started at Boco IP in 2021 opening our Tampere office, but I help clients all over Finland and abroad, in Finnish, English and Swedish. Besides IPR matters, I also have an extensive experience in developing and deploying processes and information system tools.

Education
M.Sc. (Automation Technology)
Languages
Finnish, English, Swedish, German, Russian
Activities
European Patent Institute (member), Finnish Patent Attorneys Association (member), FICPI ​​(member) Crafts and creative writing
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Boco IP - Elina Heikkilä profiilikuva

Elina Heikkilä

IP-Lawyer, Member of the Board, Partner

I work primarily with trademarks and designs. I have years of global experience in IP protection proceedings, opposition, infringement and cancellation proceedings. I conduct availability and risk analyses, contractual matters, and IP strategy planning. Every IP-workday is fascinating! My previous work experience is from the Supreme Administrative Court, the Finnish Patent Office, and from a patent agency. I am authorized to represent clients at the European Union Intellectual Property Office (EUIPO), World Intellectual Property Organization (WIPO), the Finnish Patent and Registration Office (PRH) and Finnish courts. I have worked at Boco since 2011.

Education
LL.M.
Languages
Finnish, English, Swedish, French
Activities
The Association of Finnish Patent Attorneys, The Finnish Association for Industrial Property Rights, International Trademark Association, The Finnish Anti-Counterfeiting Group, exercise, sailing, reading, antique, design
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Jaana Hämäläinen profiilikuva

Jaana Hämäläinen

European Patent Attorney, Partner

I handle the patenting of inventions related to biotechnology, biochemistry, molecular biology, and chemistry nationally and internationally. My technology expertise includes e.g. therapeutic and diagnostic methods, drugs and food. I also manage the protection of plant-related inventions and the application for plant variety rights. I am a European Patent Attorney and a Registered Patent Attorney in Finland. In addition to the prosecution of patent applications I conduct freedom-to-operate analyses, novelty searches, provide statements, and, if necessary, act as a technical expert in patent litigations and act as a lecturer.

My clients include start-ups, research institutes, small and medium-sized enterprises and large companies.

After my master’s degree in biotechnology, I completed my PhD at the Swedish University of Agricultural Sciences. I also did postgraduate studies at Cornell University in the USA and the University of Helsinki. My background in working as a researcher in different universities and research environments has helped me understand the different stages of research and development.

I have enjoyed being at Boco IP since 2000.

Education
Ph.D. (plant pathology), M.Sc. (biotechnology, chemistry)
Languages
Finnish, Swedish, English, German
Activities
Expert member of the Market Court. Professional memberships: Finnish Patent Attorneys Association, AIPPI, European Patent Institute, Finnish Industrial Property Association, Finnish Chemists' Association. Jogging, Skiing, Reading, History and Genealogy.
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Boco IP Jenni Aho profiilikuva

Jenni Aho

IP Specialist, administration and formalities

I work in the IT, mechanics and electrical group. I assist patent attorneys in all matters related to patent processing and handle external communications with clients and authorities. I previously worked in the patent field in 2002–2008. I have been by Boco IP since 2013.

Education
BBA
Languages
Finnish, English, Swedish
Activities
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Boco IP - Elina Heikkilä profiilikuva
Elina Heikkilä
IP-Lawyer, Member of the Board, Partner
+358 9 6866 8415
elina.heikkila@bocoip.com
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Jerry Härkönen
IP Advisor
+358 40 538 7223
jerry.harkonen@bocoip.com
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Laura Roselius
IP Lawyer, Partner
+358 40 738 4475
laura.roselius@bocoip.com
Peter Åkerlund
IP Lawyer, Partner
+358 9 6866 8413
peter.akerlund@bocoip.com