Judgment of the Court of Justice of 19 June 2025, (C-17/24) 1. Facts CeramTec GmbH is a German company dedicated to the manufacture of ceramic components for medical prostheses. This company held a patent relating to a ceramic material colored by chromium oxide, which expired in August 2011. Shortly after that expiration, CeramTec filed three Union trademark applications—a color mark, a figurative mark, and a three-dimensional mark—all linked to the Pantone 677C pink color characteristic of its products, as detailed below: Color mark Figurative mark Three-dimensional mark Coorstek Bioceramics LLC is a US company that manufactures advanced technical ceramic medical components, particularly for hip and spinal prostheses: CeramTec sued Coorstek Bioceramics LLC for trademark infringement and parasitic competition, while Coorstek filed a counterclaim requesting the invalidation of the marks on two grounds: that the sign consisted of a shape necessary to achieve a technical result and that the applicant had acted in bad faith. The Paris Court of Appeal annulled the contested trademarks, considering that CeramTec acted in bad faith when filing the registration application, as it intended to prolong the technical monopoly previously granted by the patent. CeramTec appealed to the Cour de cassation, which referred three preliminary questions to the CJEU concerning the interpretation of the grounds for absolute nullity contained in Article 52.1 of Regulation 207/2009: (i) whether the grounds for nullity are autonomous and mutually exclusive, (ii) whether bad faith can be found without proving the functional form and (iii) whether facts subsequent to the application can be considered to prove bad faith. 2. Rulings The CJEU concluded that the two grounds for absolute nullity are autonomous and do not exclude each other. Each one has a distinct nature and can be applied without depending on the other. The cause based on functional form protects the general interest by preventing perpetual technical monopolies, while bad faith sanctions unfair conduct in the competitive process. The CJEU clarified that bad faith can be found even when the reason for refusal relating to the functional form is not present. Factors relevant to determining bad faith include the nature of the contested trademark, the origin and use of the sign, the scope of the expired patent, the commercial logic, and the chronology of events. Thus, the CJ established that bad faith must be assessed according to the applicant's intention at the time of submitting the application. Subsequent events can only serve as indications, but cannot alter that intention if the applicant was unaware of them at the time. Consequently, only the elements that actually conditioned his purpose on that date can substantiate an assessment of bad faith. 3. Commentary The ruling determines that the interpretation of the causes of absolute nullity must be carried out in light of the spirit underlying the European trademark system, preventing it from being used for purposes unrelated to its nature. The autonomy between the causes of nullity allows for the sanctioning of strategic conduct that, although it does not strictly fit into article 7.1.e) ii), violates the logic of the system. This prevents the applicant from alleging the non-existence of a functional form as an argument to avoid the concurrence of bad faith. The non-exclusion of the causes allows both to act as complementary mechanisms to safeguard the general interest and fair competition. If a company attempts to prolong a technical monopoly after the expiration of a patent, its trademarks may be subject to the bad faith grounds, even if the owner subsequently discovers that the sign is not purely functional. The ruling gives the courts and the EUIPO greater flexibility when declaring invalidity, avoiding restrictive interpretations. For economic operators, it reinforces the obligation to act with fairness in legal transactions, reminding them that trademark registration should not be used to hinder competition. Thus, a broad interpretation of the concept of bad faith is consolidated, focusing the analysis on the real intention of the applicant and not only on the configuration of the sign. However, it leaves open the issue of proof of such intention, which remains a subjective element that must be demonstrated through evidence. The CJEU thus confirms the presumption of validity of the trademark and the need for anyone alleging bad faith to provide rational evidence against it. It is then up to the applicant to demonstrate that the contested registration was part of a legitimate business strategy. In this way, even if the brand fulfills its function of origin, it can be annulled if the intention in presenting it was dishonest. Pamela Olivos, Associate, Brands area

Judgment of the Court of Justice of 18 December 2025, Deity Shoes (C-323/24). 1. Facts Deity Shoes (hereinafter, Deity) is a company from Elche that owns several EU designs relating to footwear. Their designs are created from catalogs of Chinese trading companies, which offer predetermined components, and which allow customization of different aspects of the footwear, such as color, material and location of buckles, laces and other ornamental elements. On December 10, 2021, Deity filed a lawsuit with the Commercial Court No. 1 of Alicante for infringement of several registered and unregistered EU designs relating to shoes against Mundorama Confort and Stay Design. On April 12, 2022, the defendant companies filed a counterclaim, requesting the annulment of said designs. They argued that the controversial designs had not been the subject of any innovation, since Deity merely marketed products offered by Chinese trading companies, and that they did not meet the requirements of novelty and uniqueness. On May 24, 2022, Deity responded to the counterclaim. The Commercial Court No. 1 of Alicante raised several doubts about the interpretation of Regulation No. 6/2002 in the sector in question, and therefore decided to suspend the proceedings and send the following preliminary questions to the CJEU: “1) In order for a design to be protected by the protection regime of Regulation No. 6/2002, is it necessary that there be a genuine design activity so that the design is the result of the intellectual effort of its creator? And, in this sense, can the combination of components based on models whose appearance characteristics are mostly predetermined by trading companies be considered a genuine design activity, so that modifications to certain elements should be considered occasional and incidental?  2) In relation to the above,… can the totality or part of the appearance characteristics of a product resulting from the customization of designs offered by Chinese trading companies according to catalogs of said companies be considered to have a singular character in accordance with Article 6 of Regulation No 6/2002, when the activity of the design holder is limited to marketing in the European Economic Area (EEA) those designs without modifications or with specific modifications of components (such as soles, rivets, laces, buckles…) and the appearance characteristics are mostly predetermined by the trading companies? For these purposes, is it relevant that the components are not designed by the holder of the Community design, but are instead components offered by the trading company itself within its catalog?  3) Should Article 14 [of Regulation No 6/2002] be interpreted as meaning that the author of the design may be someone who, on the basis of a design offered by trading companies according to a catalogue, has merely customized that previous design by modifying components also offered by the trader that have not been designed by the proprietor of the Community design? In this sense, is it required to prove a certain degree of customization in order to demonstrate that the final form deviates significantly from the original design in order to claim authorship?  4) Notwithstanding the foregoing, in a case such as the present one, given the special characteristics of footwear designed from samples provided by trading companies and, insofar as the “design” is limited to the selection of previous designs from a sample and, where appropriate, to the variation of some of its components, within the catalog offered by the trading company, all following fashion trends, it must be understood that these fashion trends: a) limit the freedom of the author in such a way that small differences between the registered (or unregistered) design and another model may be sufficient to give a differentiated general impression or, on the contrary, b) affect the singular character of the registered (or unregistered) design in such a way that those elements or components will have less importance in the general impression they produce on the informed user insofar as they result from known fashion trends when compared with another model?” 2. Rulings The judgment examines the preliminary questions in two separate groups: first and third, on the one hand, and second and fourth, on the other hand, setting out its interpretation of the relevant articles of Regulation No 6/2002. As regards the first and third preliminary questions, the judgment concludes that Articles 4 to 6, in light of Article 14 of the Regulation, must be interpreted as meaning that, in order to enjoy the protection conferred on a Community design, the proprietor or author of that design is not required to demonstrate, in addition to the fulfillment of the requirements of novelty and individual character, that it results from a minimum degree of design. As regards the second and fourth preliminary questions, the judgment concludes that Article 6 of Regulation No 6/2002 must be interpreted as meaning that the fact that designs have appearance characteristics predetermined by a model proposed in a supplier's catalogue to the author of those designs, and that the modifications introduced by the author to those designs are only occasional and relate to components proposed by that supplier, cannot, in itself, preclude the recognition of their individual character. On the other hand, fashion trends cannot limit the degree of freedom of the author, so that minor differences between one or more previous designs and the controversial design may be enough for the latter to produce a different overall impression on the informed user than that produced by those previous designs, and, therefore, to have a unique character. The characteristics of a design that result...Read more

Supreme Court Judgment of February 26, 2025, Farola Latina (ECLI:ES:TS:2025:735) 1. Facts The sentence stems from the lawsuit filed in Barcelona by a Spanish architect against the company Ashghal and the State of Qatar, for infringement of intellectual property rights over a certain design work of a lamppost model "LATINA". The author argued that her work had been “copied and forged” by the defendants in the installation of streetlights on Al Waab Avenue in Doha (Qatar). In addition to the removal of the streetlights, the lawsuit sought compensation of 100.000 euros. LATINA model streetlamp installed on Avenida de Barcelona (Terrassa). Source: Urbidermis The conflict dates back to 2005, when the first contacts were made between Santa & Cole (a company that exploited the plaintiff's designs in several countries) and the public entity Ashgal, of Qatar, with the aim of carrying out a comprehensive proposal for the lighting of Al Waab Avenue, in Doha. The failure of the lengthy negotiations motivated the action that was finally filed. The defendants raised a declinatory plea for lack of international judicial jurisdiction, which was accepted by the court. The plaintiff appealed this decision and the Provincial Court issued an order on March 12, 2015 (ECLI:ES:APB:2015:1256A) revoking it and dismissing the declinatory plea. The lawsuit was resumed, and the claim was partially upheld by the Court, reducing the compensation to 50.000 euros (ECLI:ES:JMB:2018:8060). The judgment having been appealed by both parties, the fifteenth section of the Provincial Court of Barcelona issued a judgment on March 6, 2020 (ECLI:ES:APB:2020:2644) in which the two appeals were partially upheld and the sentence was left in the following terms: the sentence was limited to Ashgal, acquitting the State of Qatar; only the right to the paternity of the work and the right to its integrity were considered to have been infringed, but not the right to disclosure; the amount of compensation was set at the sum of 100.000 euros. The appeal ruling is appealed to the Supreme Court by the defendants, in a document that raises 33 grounds of procedural infringement and 4 grounds of cassation. 2. Pronouncements The first issue raised in the appeal is the violation of the provisions of the rules relating to the scope of Spanish jurisdiction (article 52.1.11 of the Civil Procedure Law). The Supreme Court acknowledges that the reasoning presented in the appealed judgment demonstrates “a profound knowledge of the case law of the CJEU,” but considers that “the inaccuracy of some of its premises leads to the conclusion reached (affirming the international jurisdiction of Spanish courts) being incorrect.” As a preliminary matter, the judgment notes that, although Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (hereinafter, Regulation 44/2001 or Brussels I Regulation) is not directly applicable, the case law of the CJEU interpreting it is useful because the rules on international jurisdiction contained in the Organic Law of the Judiciary are based on the regulations of the 1968 Brussels Convention, the provisions of which were incorporated, with few modifications, into Regulation 44/2001. The judgment of the CJEU of 3 October 2013, C-170/12, Pinckney, citing previous judgments, held that, as an exception to the fundamental principle set out in Article 2(1) of Regulation 44/2001, which confers jurisdiction on the courts of the Member State in whose territory the defendant is domiciled, Chapter II, Section 2, of that Regulation provides for a number of special conferrals of jurisdiction, including that provided for in Article 5(3) of that Regulation. Since the jurisdiction of the courts of the place where the damaging event occurred or could occur is a special rule of jurisdiction, it must be interpreted strictly, without allowing an interpretation that goes beyond the cases explicitly contemplated in the Regulation. The expression "place where the damaging event occurred or could occur", which appears in Article 5, point 3, of the Regulation, refers at the same time to the place where the damage materialized and to the place of the causal event that caused that damage, so that the action may be exercised, at the plaintiff's choice, before the courts of either of those two places. The rule of competence established in Article 5, point 3, of the Regulation is based on the existence of a particularly close connection between the dispute and the court of the place where the damaging event has occurred or may occur, which justifies an attribution of competence to that court for reasons of good administration of justice and proper conduct of the proceedings. The CJEU has also declared, in the judgment of 19 September 1995, C-364/93, Marinari, that, although it is admitted that the concept of "place where the damaging event occurred", within the meaning of Article 5(3) of the Convention (equivalent to Article 5(3) of the Convention) 5.3 of Regulation 44/2001), may refer both to the place where the damage occurred and to the place of the event causing it; this concept cannot be interpreted in an extensive way to encompass any place where the harmful consequences of an event that has already caused damage that actually occurred elsewhere may be experienced. Moreover, in the judgment of 10 June 2004, C-168/02, Kronhofer declared that this provision must be interpreted to mean that the expression "place where the damaging event occurred" does not include the place of the plaintiff's domicile where the "center of his assets" is located, simply because the plaintiff suffered economic damage in that place as a result of the loss of part of his assets that occurred and was suffered in another Contracting State. The ruling goes on to reiterate that...Read more

Judgment of the Court of Justice of 10 July 2025, Jabugo (C-322/24) 1. Facts Sánchez Romero Carvajal is the owner of the following EU trademarks in class 29: For its part, Embutidos Monells is the owner of the following Spanish national trademarks, also in class 39: In 2016 Sánchez Romero Carvajal urged Embutidos Monells by means of a request to renounce the registration of the disputed trademarks and cease the use of the figurative trademark 5Ms. The request stated that Embutidos Monells was aware of the reputation of the 5J brand belonging to Sánchez Romero Carvajal, since, as a result of the opposition filed by the latter, the OEPM denied the registration of the 5Cs sign. The request also specified that Sánchez Romero Carvajal could file an action for annulment against the 5Ms and 5Ps records respectively, before February 28, 2017 and before March 18, 2017. However, the claim for annulment before the Commercial Court No. 1 of Alicante was not filed until 2021. Embutidos Monells invoked in its defense the statute of limitations for tolerance, alleging that the registration of the disputed trademarks dates from 2012, so Sánchez Romero Carvajal had long tolerated their use and that the deadlines indicated in the extrajudicial request had expired. In this context, the Commercial Court No. 1 of Alicante decided to suspend the proceedings and refer a preliminary question to the CJEU regarding the effects that the indication of the deadlines in said request may produce. Specifically, the question is whether the fact that Sánchez Romero Carvajal indicated in an extrajudicial request a deadline for exercising the action for annulment, which coincided with the five-year statute of limitations established in the Directive, should be considered a binding conduct to prevent bad faith from being alleged after that deadline to request the annulment. Secondly, if the answer is affirmative, the question is whether the filing of an opposition by Sánchez Romero Carvajal against the registration of other subsequent European Union trademarks owned by Embutidos Monells that are almost identical (1) can be considered an effort within a reasonable time to remedy the situation, interrupting the statute of limitations.     2. Rulings The CJ ruled that the owner of an earlier trademark is not bound by the time limits set out in an extrajudicial request when it comes to alleging bad faith in the registration of a later trademark. If the holder of the earlier trademark has sufficient evidence of bad faith at the time of the request, he may continue to invoke the invalidity for bad faith even after the deadline has expired. Therefore, if the cause underlying the action for invalidity consists of the bad faith of the holder of the later trademark when filing the application for registration of said trademark, the latter cannot, in order to frustrate said action, validly invoke the statute of limitations for tolerance, established in Article 9, paragraph 1, of Directive 2008/95, against a holder of the earlier trademark. However, the Court notes that, since good faith is presumed, it is the party alleging bad faith that must prove its existence in the examination of the merits of said action. In view of the answer given to the first preliminary question, it is not appropriate to answer the second. 3. Commentary The judgment in this case is very relevant because, in addition to following the previous case law of the CJEU on bad faith, from the judgment issued in the Chocoladefabriken Lindt & Sprüngli case (C-529/07) to HEITEC (C-466/20), it serves to reinforce that limitation periods should not prevent the exercise of rights when there is bad faith in the application for registration of a trademark. The owner of a prior trademark may issue an extrajudicial request indicating deadlines for filing an action for invalidity, which may generate in the recipient a reasonable confidence that, once that deadline has expired, no legal action will be taken. Although this could be interpreted as binding conduct for the party sending the request, the CJEU has indicated that this reliance cannot prevail over the imprescriptibility of an action for annulment based on bad faith. The ruling is noteworthy because it strengthens the system of fair competition in the European Union, thereby protecting owners of renowned trademarks against the misappropriation of identical or similar distinctive signs by competitors acting in bad faith. Marta Rodríguez, Associate Partner, Brands area

Supreme Court Judgment of 24 April 2025, Teva (ECLI:ES:TS:2025:1714) 1. Facts The litigation pits the pharmaceutical company Teva against the holder of a European patent relating to a compound intended for the treatment of inflammatory diseases. Teva requested the partial invalidation of the patent alleging a lack of inventive step, considering that the claimed technical effect was not plausible in light of the information contained in the initial application. The defendant argued that the plausibility of the effect stemmed from the expert's general knowledge and subsequent studies that confirmed the compound's effectiveness. After a procedural journey through the lower and appeal courts, the case reached the Supreme Court, which had to determine whether the plausibility of the intended technical effect constitutes a requirement to assess inventive activity within the framework of the Patent Law (PL) and the European Patent Convention (EPC). 2. Rulings The Supreme Court starts from the principle that inventive activity must be assessed in accordance with Article 56 of the EPC and the consolidated doctrine of the European Patent Office (EPO). It emphasizes that the invention must offer a technical solution to an objective technical problem, and that the claimed contribution must be credible at the time of the application. The Court adopts the notion of “plausibility of the technical effect”, developed by the EPO jurisprudence, according to which a mere statement of the technical effect is not enough: it is necessary that, based on the request and the general knowledge of the expert in the matter, the effect is plausible or reasonably supported. If the effect is not plausible at that time, the invention lacks inventive step. The Supreme Court clarifies that plausibility does not constitute a new autonomous patentability requirement, but rather a methodological criterion for assessing inventive activity. It rejects the use of subsequent evidence or data to remedy the initial lack of plausibility, as this would alter the balance of the patent system and unduly expand the content of the original application. Applying this doctrine to the case, the Supreme Court concludes that the contested patent did not provide sufficient data to make the alleged anti-inflammatory effect credible. The description did not contain experimental examples or concrete references that would allow the expert to consider the compound's mechanism of action plausible. Consequently, it confirms the partial invalidity of the patent due to lack of inventive activity. 3. Commentary: The Supreme Court ruling consolidates in Spain the European doctrine on the plausibility of the technical effect as an essential element for assessing inventive activity. The Court adopts the jurisprudence of the EPO and the CJEU, establishing that the applicant must provide, from the time of filing, a sufficient technical basis that makes the effectiveness of the invention credible. This prevents the granting of speculative patents or patents based on mere hypotheses. In practice, this forces companies to justify their inventions more rigorously, incorporating data or references that support the plausibility of the alleged effect. Ana Sanz, Associate Partner in the Legal area.

Judgment of the Court of Justice of 10 July 2025, DADA (C-37/24) 1. Facts The judgment originates from a preliminary question raised by the Curtea de Apel București (hereinafter, the High Court of Bucharest, Romania) in the context of a dispute between the Uniunea Producătorilor de Fonograme din România (hereinafter, UPFR), a collective management entity representing phonogram producers, and DADA Music SRL, a Romanian radio broadcaster, in relation to the broadcasting of phonograms for commercial purposes. On October 20, 2011, both parties entered into a non-exclusive license agreement granting DADA Music the right to broadcast phonograms for commercial use, obligating it to pay equitable remuneration determined according to the current methodology. This methodology established remuneration based on the station's income or expenses, and also included a minimum lump sum remuneration in Roman leus (250 euros per quarter for local stations and 500 euros for national stations) as a guaranteed minimum amount. Law No. 74/2018, subsequently published, abolished the provisions relating to said minimum remuneration, effective ninety days after its publication, without providing for transitional measures or new calculation criteria. After it came into effect, DADA Music stopped paying the minimum amount, claiming the immediate application of the new regulations and limiting the payment to a remuneration proportional to its actual income. The UPFR argued that the previous methodology should continue to be applied until a new one was approved, arguing that the immediate elimination of the minimum violated Directive 2006/115/EC, Directive 2014/26/EU and Articles 17 and 52 of the Charter of Fundamental Rights of the European Union. On June 24, 2019, UPFR filed a lawsuit before the Tribunalul București (hereinafter, Bucharest District Court), against DADA Music. The Court, in its judgment of 28 January 2022, partially upheld the claim and ordered DADA Music to pay a symbolic sum, considering that, after the repeal of the provisions on minimum remuneration, it was only appropriate to pay an amount proportional to the income obtained. Both parties filed an appeal with the High Court of Bucharest, which decided to refer a preliminary question to the Court of Justice of the European Union (hereinafter, CJEU) on the compatibility of Law No. 74/2018 with the right to fair remuneration recognized in Union law. 2. Rulings In its first preliminary question, the referring body asks, in essence, whether Articles 8.2 of Directive 2006/115/EC and 16.2 of Directive 2014/26/EU, in conjunction with Articles 17.2 and 52.1 of the Charter, preclude national legislation that does not guarantee a minimum lump-sum remuneration for phonogram producers for the broadcasting of commercially published phonograms. It also raises the question of whether this regulation can repeal, with limited effects in time, the provisions that established it, without modifying the calculation criteria or providing for a new method of determination. The CJEU declares that Article 8.2 of Directive 2006/115 imposes on Member States the obligation to guarantee artists and producers a fair and single remuneration for the broadcasting or communication to the public of phonograms, without setting out the form or the specific calculation criteria. For its part, Article 16.2 of Directive 2014/26 requires that the fees of collecting societies be fair and reasonable, leaving Member States a margin of appreciation for their practical application. On this basis, the CJEU considers that these provisions do not require the maintenance of a statutory minimum or lump sum remuneration, and therefore do not preclude a national rule that abolishes it, even immediately, provided that fair or adequate remuneration is guaranteed and the principle of proportionality is respected, preserving the essential content of the intellectual property right recognized in Article 17.2 of the Charter. The concepts of “fair remuneration” and “adequate remuneration” must be interpreted consistently, in accordance with the objectives of both Directives, which seek a fair balance between owners and users. The second preliminary question referred to the CJEU examines the role of the national judge in verifying the fairness or adequacy of the remuneration resulting from the internal system. The Court concludes that it is for the national judge to verify whether the remuneration retains its equitable character, taking into account elements such as the economic value of the use, its nature and scope, and the value of the service provided by the management entity. The Directives do not establish a single method for determining remuneration, but they require that the national system maintain a fair balance between the interests of licensees and those of users, so that the remuneration is neither insignificant nor disproportionate.  Furthermore, the CJEU recalls the principle of conformity interpretation, which obliges the judge to apply domestic law in a manner consistent with EU law. If this is not possible, the opposing national rule must be disapplied, by virtue of the primacy of Union law. All of this without the need for a prior declaration of unconstitutionality, provided that the legal system of the Member State recognizes the competence of the ordinary courts to guarantee such primacy. Consequently, the CJEU declares that it is for the national court to verify the fairness or appropriateness of the resulting remuneration, interpreting domestic law in accordance with Union law and, if that is not possible, leaving the national provision inapplicable. With regard to questions three and four, the Court specifies the guiding criteria that national courts may take into account when assessing the fairness or adequacy of the remuneration. Among them it mentions: (i) the economic value of the use of phonograms, considering the reach of the public and the benefit obtained; (ii) the nature, frequency and territorial extent of the use; (iii) the effectiveness of the collecting society in collection and distribution; (iv) comparable rates in ...Read more

Judgment of the Court of Justice of 1 August 2025, Lunapark (C-452/24) 1. Facts: Lunapark has owned the registered trademark DRACULA for confectionery products since 2009. Prior to this registration, the company Karkkimies used the sign "Dracula" to market similar products, without having acquired any trademark rights. In 2019, Hardeco bought Karkkimies and continued to use the "Dracula" mark for the same products, whose packaging featured the word "Dracula" and figurative signs representing the corresponding character. In 2020, Lunapark sued Hardeco for trademark infringement. Hardeco argued that Lunapark had tolerated Karkkimies' use of the sign for many years, which should prevent him from exercising the action now. The Finnish court of first instance accepted this argument based on a general principle of Finnish civil law according to which actions must be exercised within a reasonable time. Lunapark appealed to the Supreme Court. The Supreme Court of Finland referred a preliminary question to the CJEU on whether Article 10 of Directive 2015/2436, in the context of a dispute concerning trademark infringement, allows a Member State to limit the right of the proprietor of a trademark by means of such a general principle of inactivity in cases not provided for in Articles 9 and 18 of the Directive, which regulate tolerance towards a subsequently registered trademark. 2. Rulings The CJEU states that Article 10 of the Directive precludes a Member State from establishing, by means of a general principle of national law, the limitation of the right of the holder of a trademark to prohibit the use of an identical or similar sign in cases other than those provided for in Articles 9 and 18 of the Directive. The CJEU bases its decision on the fact that Article 10 constitutes a complete harmonisation of the material content of trademark law in the Union, so that Member States have no room to introduce additional limitations. This exhaustive character also extends to the regime of tolerance or prescription for inactivity, regulated in Article 18, paragraph 1, which only contemplates the possibility of limiting the right of the holder in relation to a later registered trademark, and always under strict conditions: knowledge of the use, the passage of five consecutive years and absence of bad faith on the part of the applicant of the later trademark. The CJEU also recalls its previous case law (judgment of 22 September 2011, Budějovický Budvar, C 482/09, paragraph 33), according to which Article 9 fully harmonizes the requirements for prescription by tolerance in invalidity proceedings, a harmonization that also extends to infringement actions relating to a subsequently registered trademark. On this basis, the CJEU stresses that the harmonised regime does not provide for any limitation arising from tolerance with respect to unregistered signs, nor does it confer rights to their mere prolonged use. In this specific case, even if the third party had used the sign "Dracula" prior to the registration of the DRACULA trademark by Lunapark, such use —unless it had generated an exclusive right under national law, which the sending body must verify— is not included within the harmonised tolerance regime of Article 18, since this refers exclusively to subsequently registered trademarks and not to signs lacking registration protection. Therefore, it is concluded that Member States cannot introduce additional limitations derived from general principles of their national law — such as a statute of limitations for inactivity regarding the use of an unregistered sign — because this would amount to imposing restrictions not provided for by the harmonised regulations and would compromise the essential objective of ensuring uniform and consistent protection of trademarks throughout the EU. 3. Commentary The judgment reaffirms the case law of the Soda-Club (CO2) and SodaStream International case (C 197/21), in which the CJEU has insisted that Article 10 of the Directive establishes a complete harmonisation of the rules relating to the rights conferred by the trademark, thus exhaustively defining the material content of the rights enjoyed by trademark holders in the European Union. From a practical point of view, the decision has several implications. First, it reinforces the legal certainty of the registered owner: their right is not affected by inaction in the face of unprotected use, guaranteeing uniformity and stability in the protection of trademarks. Second, it limits the expectations of third parties who, in good faith, have used a sign without registering it, making it clear that the European system privileges the registered owner. Third, it protects the coherence of the common market, preventing the application of national civil principles from generating disparities in trademark protection between Member States. This ruling also clarifies a potentially contentious area: the transition between the prolonged use of an unregistered sign and the emergence of a registered owner who remains inactive. The ruling confirms that the only way for the prior user to oppose its use is through the acquisition of a prior right or the existence of a subsequently registered trademark that generates the effects of tolerance. In summary, this matter consolidates the strength of the exclusive right conferred by the registered trademark and underlines that only the causes regulated by the Directive can limit it. At the same time, it warns economic operators that prolonged use of a sign without registering it does not offer sufficient protection against a registered owner who decides to exercise their rights, even after a long period of inactivity. Lorena Sánchez, Lawyer in the Trademark area.