Judgment of the Court of Justice of August 1, 2025, Lunapark (C-452/24)
1. Facts
Lunapark has been the owner of the registered trademark DRACULA for confectionery products since 2009. Prior to that registration, the company Karkkimies used the “Dracula” mark to market similar products, without having acquired any trademark rights. In 2019, Hardeco acquired Karkkimies and continued to use the “Dracula” mark for the same products, whose packaging featured the word “Dracula” and figurative marks depicting the corresponding character.
In 2020, Lunapark sued Hardeco for trademark infringement. Hardeco argued that Lunapark had tolerated Karkkimies’s use of the mark for many years, which should now prevent it from bringing the action. The Finnish court of first instance accepted this argument based on a general principle of Finnish civil law according to which legal actions must be brought within a reasonable time. Lunapark filed an appeal.
The Supreme Court of Finland referred a question to the Court of Justice for a preliminary ruling on whether Article 10 of Directive 2015/2436, in the context of a dispute concerning trademark infringement, allows a Member State to limit the rights of a trademark owner by applying such a general principle of inactivity in cases not provided for in Articles 9 and 18 of the Directive, which govern tolerance of a later registered trademark.
2. Statements
The Court of Justice holds that Article 10 of the Directive precludes a Member State from establishing, through a general principle of national law, a statute of limitations on the trademark owner’s right 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 Court of Justice bases its decision on the fact that Article 10 constitutes a complete harmonization of the substantive content of trademark law within the Union, such that Member States have no discretion to introduce additional limitations. This exhaustive nature also extends to the regime governing the lapse of rights due to inactivity, as set forth in Article 18(1), which provides only for the possibility of limiting the proprietor’s rights in relation to a later registered trademark, and always under strict conditions: knowledge of the use, the passage of five consecutive years, and the absence of bad faith on the part of the applicant for the later trademark. The CJEU also recalls its previous case law (judgment of September 22, 2011,Budějovický Budvar, C-482/09, paragraph 33), according to which Article 9 fully harmonizes the requirements for the statute of limitations based on acquiescence in invalidity proceedings, a harmonization that also extends to infringement actions relating to a later registered trademark.
On this basis, the Court of Justice emphasizes that the harmonized system does not provide for any limitation arising from tolerance with respect to unregistered signs, nor does it confer rights based solely on their prolonged use. In the present case, even if the third party had used the sign “Dracula” prior to Lunapark’s registration of the DRACULA trademark, such use—unless it had given rise to an exclusive right under national law, a matter to be verified by the referring court—is not covered by the harmonized tolerance regime of Article 18, since that provision refers exclusively to later-registered trademarks and not to signs lacking registration protection.
Consequently, it is concluded that Member States may not introduce additional limitations based on general principles of their national law—such as a statute of limitations for inactivity regarding the use of an unregistered mark—because this would amount to imposing restrictions not provided for by the harmonized legislation and would undermine the fundamental objective of ensuring uniform and consistent protection of trademarks throughout the EU.
3. Comment
The ruling reaffirms the line of case law established in the Soda-Club (CO2) and SodaStream International (C 197/21) cases, in which the Court of Justice has emphasized that Article 10 of the Directive establishes a complete harmonization of the rules governing trademark rights, thereby comprehensively defining the substantive scope of the rights enjoyed by trademark owners in the European Union.
From a practical standpoint, 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, thereby ensuring uniformity and stability in trademark protection. Second, it limits the expectations of third parties who, in good faith, have used a mark without registering it, making it clear that the European system gives priority to the registered owner. Third, it protects the coherence of the common market by preventing the application of national civil law principles from creating disparities in trademark protection among Member States.
This ruling also clarifies a potentially contentious issue: the transition from the prolonged use of an unregistered mark to the emergence of a registered owner who remains inactive. The ruling confirms that the only way for a prior user to assert their use is through the acquisition of a prior right or the existence of a later registered trademark that gives rise to the effects of acquiescence.
In summary, this case reaffirms the strength of the exclusive right conferred by a registered trademark and emphasizes that only the grounds set forth in the Directive may limit that right. At the same time, it warns economic operators that prolonged use of a sign without registering it does not provide sufficient protection against a registered owner who decides to exercise their rights, even after a long period of inactivity.
Lorena Sánchez, Attorney in the Trademark Practice Group.