
Trademark Enforcement Strengthened: CJEU Bars National Inactivity Defenses Beyond EU Acquiescence Rules
In Short
The Situation: In Case C‑452/24, Lunapark Scandinavia Oy Ltd v Hardeco Finland Oy, the Court of Justice of the European Union ("CJEU") was asked whether a general national principle of forfeiture/laches for "failure to act within a reasonable time" could restrict a trademark owner's rights beyond the harmonized acquiescence regime under the Trade Mark Directive (EU) 2015/2436 ("TMD").
The Development: The CJEU held that Article 10 TMD fully harmonizes the substantive rights of a registered trademark. Inactivity-based limits are exhaustively governed by Articles 18(1) and Article 9(1)-(2) TMD (acquiescence to a later registered trademark). National non‑harmonized defenses based on inaction cannot further restrict the trademark rightsholders' rights, particularly where the defendant only uses an unregistered sign.
Looking Ahead: National courts must disapply domestic "reasonable time"/laches-type rules outside the harmonized acquiescence scenario, and defendants seeking certainty should secure registration (and then rely, where conditions are met, on the five‑year acquiescence defense) instead of relying on unregistered use.
Background of the Decision
The dispute arose after Lunapark Scandinavia secured registration of the Finnish (national) trademark DRACULA (filed in 2003, registered in 2009) for confectionery good. Prior to such registration, Karkkimies commercialized confectionery products bearing the sign 'Dracula'. Hardeco, successor to Karkkimies, continued longstanding sales of Dracula-branded sweets without holding any registered rights.
In 2020, Lunapark brought an infringement action before the Finnish Commercial Court. Hardeco relied on its and Karkkimies' long-standing use of the 'Dracula' name and argued that Lunapark had forfeited its rights due to its inaction, invoking a Finnish national principle of "reasonable time" to bar enforcement.
The Finnish Commercial Court dismissed Lunapark's infringement action, applying the Finnish general "forfeiture" principle, and the Finnish Supreme Court referred the matter to the CJEU to decide whether Article 10 TMD precludes such a national principle from setting additional limits on trademark rightsholders' rights beyond Articles 18(1) and 9(1)-(2) TMD.
Key Aspects of the Ruling
1. Legal Framework and Reasoning
The court held that Article 10 TMD fully harmonizes the substantive rights conferred by a registered trademark and bars reliance on general national forfeiture or laches to limit injunctions, except for the TMD-set harmonized acquiescence regime. Articles 18(1) and 9(1)-(2) TMD bar trademark rightsholders' actions only in case of having tolerated a later registered trademark (subject to the five‑year, knowledge‑based acquiescence test and bad‑faith carve‑out), not an unregistered sign. As neither Karkkimies nor Hardeco held a registered right, national inaction-based forfeiture could not limit Lunapark's Article 10 rights.
2. What the Court Clarified
- Exhaustive limits. Inactivity-based limits on the exclusive right conferred to a trademark owner are fully and exclusively set by Article 18(1) read with Article 9(1)-(2) TMD.
- No national laches for injunctions. National courts cannot add non‑harmonized, time‑based defenses (e.g., "reasonable time" forfeiture) to curtail the rights conferred by Article 10 outside acquiescence to a later registered trademark.
- Unregistered use does not help. Longstanding unregistered use confers no basis to defeat enforcement under Article 10 TMD.
3. What Remains Outside the Ruling:
- Limitation periods for monetary relief. The judgment does not address national rules that time limit damages claims (e.g., the Finnish five-year limit for damages) so long as they do not negate the harmonized substantive right to injunctive relief under Article 10.
- EU trademarks. Although the case relates to national trademarks under the TMD, the harmonization logic is consistent with the EUTMR and hence the same solution should apply to European trademarks.
Conclusion
The CJEU reinforces full harmonization of trademark owners' substantive rights and the narrow, exhaustive scope of inactivity-based limits. Outside acquiescence to a later registered trademark, national laches/forfeiture rules cannot curtail the right to prohibit use under Article 10 TMD. Registration—and timely rights management—remains paramount.
Three Key Takeaways
- Full harmonization. Article 10 TMD fully harmonizes trademark rightsholders' substantive rights; inactivity-based limits are exhaustively set by Articles 18(1) and 9(1)-(2) TMD.
- No national laches for injunctions. General national "reasonable time"/forfeiture principles cannot bar Article 10 TMD enforcement against unregistered signs.
- Registration matters. Only later registered trademarks can benefit from acquiescence; longstanding unregistered use will not shield against injunctions.