Two judgments of the CJEU rendered on August 1, 2025, dealt with significant trademark issues of practical importance. The first case, Lunapark/DRACULA, presented the question whether national law principles of acquiescence are applicable beyond what is provided for in the Trademarks Directive. In the second case, Tradeinn/ED, the question was whether possession of infringing goods in a foreign country amounts to trademark infringement.
1. The Lunapark/DRACULA Case – Laches and acquiescence in trademark law – is there room for national rules?
On August 1, 2025, the CJEU rendered its judgment in Case C-452/24, Lunapark Scandinavia Oy Ltd v. Hardeco Finland Oy. The Supreme Court of Finland had referred the following question to the CJEU:
Does Article 10 of Directive 2015/2436 preclude the application, in a dispute concerning a trade mark infringement, of a national principle whereby the proprietor of a trade mark, also in cases other than those covered by Article 18(1) and Article 9(1) or (2) of that Directive, could forfeit the right conferred on him or her by Article 10(2) and (3) thereof to prohibit a third party from using a sign the use of which adversely affects or is liable adversely to affect one of the functions of the trade mark, on the ground that, though being aware of the use of the mark, he or she has not applied for prohibition of that use within a reasonable time?
Article 10 of the Trademarks Directive provides for exclusive rights of the proprietor of a registered trademark. Article 18 deals with so-called intervening rights, i.e., rights acquired at a time when the earlier trademark could not be enforced against the later registered mark, and Article 9 provides for a statutory acquiescence rule (five years concurrent use) applicable in conflicts between registered trademarks.
The question arose in a case where Lunapark, owner of a Finnish trademark for DRACULA, had brought an infringement action against Hardeco for the use of the same mark. That mark had been used for many years prior to Lunapark’s registration by a company later acquired by Hardeco. The Market Court found the signs identical and likely to cause confusion. However, the court dismissed Lunapark’s claims on the ground that Lunapark’s long inactivity in objecting to the use made by Hardeco’s predecessor effectively barred enforcement under a Finnish private‑law principle (not the statutory acquiescence rule). Lunapark appealed to the Supreme Court, arguing that applying that national principle would unlawfully restrict the exclusive rights conferred by Directive 2015/2436.
The Court – in a judgment by the 8th Chamber (composed of three judges), and without an opinion by an Advocate General – answered the question as follows:
Article 10 of Directive (EU) 2015/2436 must be interpreted as precluding the applicability of a general principle of national law which provides that the right of the proprietor of a registered trade mark to prohibit the use by a third party of a sign identical with, or similar to, that trade mark for goods identical with or similar to those for which that mark was registered is precluded, in a situation other than that referred to in Article 18(1) of that directive, read in conjunction with Article 9(1) or (2) thereof.
The reasons given for this interpretation of the Directive are found in two paragraphs of exceptional brevity, as follows:
36 In that regard, as is apparent from the foregoing and as the Finnish Government, moreover, submits in its written observations, a national court cannot, in the context of a dispute concerning the exclusive right conferred by a trademark, limit the exercise of that right beyond what is provided for in Article 18(1) of Directive 2015/2436, read in conjunction with Article 9(1) or (2) thereof.
37 A contrary interpretation of Article 10 and Article 18(1) of Directive 2015/2436 would undermine the objective pursued by that Directive, which consists, inter alia, as stated in recital 10 of that directive, in ensuring uniform protection for registered trademarks in the legal systems of all the Member States.
What is said to be “apparent from the foregoing” is a brief recital of the contents of Articles 10, 18, and 9 of the Directive, with the latter two Articles applying only to conflicts between registered trademarks.
Comments
The interpretation of the Trademarks Directive as providing “absolute” rules from which Member States may not detract or to which they may not add unless authorized by the Directive has a solid basis in the precedents. For example, the CJEU held that Member States may not add invalidity grounds not authorized by the Directive (Case C-371/18, Sky, para. 83-85). It is also arguable that the five-years concurrent use rule in Article 9 of the Directive precludes Member States from applying their national acquiescence rules to conflicts between registered trademarks, although the opposite position is also well established. For example, the German Trademark Law provides in its Section 21 (4) that “Paragraphs 1 to 3 [the statutory acquiescence rules] leave unaffected the application of general principles of “Verwirkung” [laches and acquiescence].” This has been a provision of German trademark law since 1995 and has never been challenged. What the CJEU has done in the DRACULA case is however entirely different – it has basically liberated the proprietors of registered trademark from their obligations arising under national civil law rules, such as the obligation to conduct their affairs in good faith (Sec. 242 of the German Civil Code). It is also submitted that limiting a proprietor’s relief by requiring that he must conduct himself as all other participants in the market, observing rules such as one must not sleep on one’s rights, does not interfere with the notion that trademark proprietors must enjoy the same protection in all Member States – limiting the DRACULA owner in Finland for having slept on its rights does not affect the protection of trademarks in neighboring countries or anywhere else.
