Judgment of the Court of Justice of 1 August 2025, Lunapark (C-452/24)
1. Facts
Lunapark has held the registered trademark DRACULA for confectionery products since 2009. Prior to this registration, the company Karkkimies used the name "Dracula" to market similar products without having acquired any trademark rights. In 2019, Hardeco acquired Karkkimies and continued to use the name "Dracula" for the same products, whose packaging featured the word "Dracula" and figurative symbols representing the character.
In 2020, Lunapark sued Hardeco for trademark infringement. Hardeco argued that Lunapark had tolerated Karkkimies' use of the mark for many years, which should prevent it from bringing the action now. The Finnish court of first instance accepted this argument based on a general principle of Finnish civil law that legal actions must be brought 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 the Directive 2015/2436In the context of litigation concerning trademark infringement, it allows a Member State to limit the right of the trademark holder 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. Pronouncements
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 proprietor 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 substantive content of trademark law in the Union, such that Member States have no room to introduce additional limitations. This exhaustive nature also extends to the tolerance or limitation regime for inactivity, regulated in Article 18(1), which only contemplates the possibility of limiting the proprietor's right in relation to a subsequently registered trademark, and always under strict conditions: knowledge of use, the lapse of five consecutive years, and the absence of bad faith on the part of the applicant for the subsequent 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 nullity proceedings, a harmonization that also extends to infringement actions relating to a subsequently registered trademark.
On this basis, the CJEU emphasizes that the harmonised regime does not provide for any limitations arising from tolerance with respect to unregistered signs, nor does it confer rights based on their mere prolonged use. In the 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, a matter to be verified by the referring body—is not covered by 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. Comment
The ruling reaffirms the jurisprudential line of the case Soda Club (CO2) and SodaStream International (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 standpoint, the decision has several implications. First, it strengthens the legal certainty of the registered trademark holder: their rights are not affected by inaction regarding unprotected use, thus guaranteeing uniformity and stability in trademark protection. 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 favors the registered trademark holder. Third, it protects the coherence of the common market, preventing the application of national civil law 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 mark and the emergence of a registered owner who remains inactive. The judgment confirms that the only way for the prior user to oppose the use is through the acquisition of an earlier right or the existence of a subsequently registered trademark that creates the effect of tolerance.
In summary, this case reinforces the strength of the exclusive right conferred by a registered trademark and underscores that only the grounds regulated by the Directive can limit it. At the same time, it warns economic operators that prolonged use of a sign without registration does not offer sufficient protection against a registered trademark holder who decides to exercise their rights, even after a long period of inactivity.
Lorena Sánchez, Lawyer in the area of Brands.
