Jani Kaulo

Jani Kaulo

”Jani has a solution to any problem – his rich experience, effective communication and practical advice set him apart from other attorneys”. World Trademark Review 1000 (2020)

Jani Kaulo specialises in the protection, enforcement and commercialisation of trademarks. He manages global trademark portfolios of major companies and represents clients of all sizes in trademark prosecution in the European Union Intellectual Property Office (EUIPO) and the Finnish Patent and Registration Office. Jani also acts as a litigator in the Finnish and European Union courts representing clients in trademark related cases. He assists companies in creating global brand protection strategies and drafts trademark related agreements.

Jani is a regular speaker in IP related seminars and events. He is also a popular expert commentator in brand protection related matters in media, and has written several articles in different publications in the field of IP. Jani joined the firm in 2012. He became an Associate Partner in 2017 and a Partner in 2018.

Among clients, Jani is endorsed for being responsible, reliable, practical and efficient in protecting clients’ interests. “If there is any possible solution to a branding issue, Jani Kaulo will find it”, says one client. “He is one of the most professional and responsible colleagues I have worked with,” enthuses another client. “Jani always replies to emails and keeps you informed, it really makes you feel secure. Creative and analytical, he is also very practical and efficient”, describes a third one. Jani has been ranked as a leading trademark professional in Finland by World Trademark Review 1000 since 2016.

Jani graduated from the law faculty of the University of Turku (LLM in 2004), and he holds an MBA from the University of Bolton (2012), which he completed in Vietnam. Before joining Kolster, Jani worked as a lawyer for Castrén & Snellman, Attorneys Ltd. (2004-2007), Heinonen & Co, Attorneys-at-law Ltd. (2007-2008) and Attorneys-at law Juridia Ltd. (currently Eversheds, 2008-2009).

Jani also serves as a Supervisory Board Member and International Trade Committee Member at the ECTA, and in addition, as the Chair of Finland-South East Asia Business Association (part of FinnCham).

Major references

  • Representing Schaeffler Technologies GmbH & Co. Kg. Ina successfully in an anti-counterfeiting and trademark infringement litigation in the Supreme Court of Finland (KKO:2020:72) – 28.9.2020
  • Representing Schaeffler Technologies GmbH & Co. Kg. Ina successfully in an anti-counterfeiting and trademark infringement litigation in a case of preliminary ruling from the Court of Justice of European Union (C-772/18) – 30.4.2020
  • Representing American video game company in trademark matters in Finland – since 2020
  • Managing the brand portfolio of China’s largest producer of sanitary products in the European Union – since 2020
  • Assisting Saga Furs plc in trademark license agreement negotiations with North American Fur Auction – November 2019
  • Representing Chinese dairy product company successfully in trademark opposition case in the EUIPO – 5.8.2019
  • Representing Swiss motor oil manufacturer company successfully in two trademark opposition proceedings in the EUIPO – 30.5.2019
  • Representing Business Finland successfully in EU collective mark prosecution in the Boards of Appeal of EUIPO – 17.4.2018
  • Assisting American VR headset and equipment manufacturer in trademark matters in Finland 2017
  • Representing Taiwanese sports clothing company successfully in trademark opposition proceedings in the EUIPO – 21.8.2017
  • Representing BMW and Rolls-Royce in trademark infringement litigation in the Market Court (MAO:641/16) - 3.11.2016
  • Representing Sanrio Company Ltd. successfully in an anti-counterfeiting and trademark infringement litigation in the District Court of Helsinki – 11.10.2016
  • Representing Schaeffler Technologies GmbH & Co. Kg. successfully in an anti-counterfeiting and trademark infringement litigation in the District Court of Helsinki – 22.6.2015
  • Representing Italian fashion clothing brand successfully in trademark opposition in Finland – 14.3.2014
  • Managing the global brand portfolio and IP enforcement of Saga Furs plc – since 2013
  • Representing 200+ global brand-owners in customs actions in Finland – since 2012
  • Managing Toyota’s IP enforcement actions in Finland - since 2012

Lawyer career

  • Kolster Ltd., IP Lawyer 2012-2017, Associate Partner 2017, Partner 2018-
  • Juridia, Attorneys-at-law, Ltd. (currently Eversheds Attorneys Ltd.), Associate 2008-2009, Attorney-at-law 2009
  • Heinonen & Co Oy, Attorneys-at-law, Ltd., Associate 2007-2008
  • Castrén & Snellman, Attorneys-at-law, Ltd., Trainee 2004, Associate 2005-2007

Education and training

  • European trademark and design attorney 2015
  • Authorized trademark attorney 2014
  • MBA, University of Bolton 2012
  • Attorney-at-law 2009
  • Master of Laws, University of Turku 2004

International rankings

  • Leading Trademark Professional in Finland, 2020, World Trademark Review (WTR1000)
    Quote from the ranking: "With its Kolster Market Watch offering, spearheaded by Jani Kaulo, anti-counterfeiting is another strong suit at the firm. Kaulo thrives in an international setting and, through the China desk, shines when crafting strategies for western brands looking to cement themselves in Asia." "Jani has a solution to any problem – his rich experience, effective communication and practical advice set him apart from other attorneys."
  • Leading Trademark Professional in Finland, 2019, World Trademark Review (WTR1000)
    Quote from the ranking: "If there is any possible solution to a branding issue, Jani Kaulo will find it. "Responsible for the Asian affairs of the firm, Kaulo is a favourite among international clients. "He is one of the most professional and responsible colleagues I have worked with," enthuses one. "Jani always replies to emails and keeps you informed, it really makes you feel secure. Creative and analytical, he is also very practical and efficient."
  • Leading trademark professional in Finland, 2018, World Trademark Review (WTR 1000)
    Citation from the ranking analysis: "The man in charge of Asian affairs is client favourite Jani Kaulo. "Jani has rich experience and outstanding communication skills, and provides a more prompt and practical service than attorneys at other firms. He solves problems quickly and efficiently and follows fee schedules strictly. He seems to work seven days a week." In addition, he spearheads "the most experienced anti-counterfeiting team in Finland". In addition, Jani was ranked as a leading practitioner in anti-counterfeiting. 
  • Leading IP professional in Finland, 2017, Managing Intellectual Property 2017 IP Stars
    In the MIP IP Stars 2017 survey, a client has described his attorney work as follows: "Jani Kaulo makes the customer feel that its interests are protected and that he wants to serve the customer".
  • Leading trademark professional in Finland, 2017, World Trademark Review (WTR 1000)
    Jani was ranked as a leading practitioner in anti-counterfeiting. In addition, WTR 1000 noted e.g. the following: Jani Kaulo described as "an authority on protecting intellectual property in East Asia where clients value his rich experience, smart communication and prompt responses."
  • Leading trademark professional in Finland, 2016, World Trademark Review (WTR 1000)
    Jani was ranked as a leading practitioner in anti-counterfeiting in Finland. WTR 1000 noted e.g. the following "Manning the Chinese desk is Jani Kaulo, a staunch defender of clients’ rights who plays a big part in the fight against fakes." 

Fiduciary positions

  • ECTA: Member of the China Task Force 2018-, Member of the Supervisory Board 2019-, Member of the International Trade Committee 2020-
  • Finland-South East Asia Business Association: Member of the Board 2015-, Vice-Chairman 2017, Chairman 2018-

Publications in English

  • IP for Europe's Next Brands, 2015, The Handbook of European Intellectual Property Management, 4th edition, Kogan Page, UK
  • Seizure of Counterfeit Goods at the Finnish Custom, Sep 26, 2013, IPRinfo 3/2013
  • Establishment of a Foreign-Investment Enterprise in the People's Republic of China, 2005, Multikustannus, Finland

IP expertise

  • Competitor monitoring: trademark oppositions, cancellations and invalidations
  • Infringement statements and scope of protection analyses related to trademarks
  • Trademark application process management in Finland and internationally: official actions, responses
  • IPR Due Diligence in corporate acquisitions
  • IPR audits and recommendations for actions
  • Brand protection strategies
  • IPR In-house expert services in client companies (e.g. 1 day per week)
  • IP ancillary agreements
  • Legal terms and agreements for e-commerce and online services
  • Court proceedings in disputes (infringements, oppositions, cancellations, invalidations)
  • Dispute settlement negotiations
  • Management of global trademark portfolios
  • Anti-counterfeiting and customs surveillance
  • IP training
  • Kolster China Desk™ services

Client industries

  • Automotive
  • Communications and media
  • Consumer goods
  • Financial services
  • ICT
  • Media and entertainment
  • Public services
  • Health care
  • Industrial equipment
  • Software
  • Pharmaceuticals & medical products
  • Utilities / cleantech
  • Telecommunications
  • Fashion
  • Food and beverages
  • Education export

IPR sector memberships

  • Association of Finnish Patent Attorneys
  • Finnish AIPPI Group – International Association for the Protection of Industrial Property
  • ECTA – European Communities Trade Mark Association
  • FICPI – International Federation of Intellectual Property Attorneys
  • Association of Finnish Lawyers
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