Judgment;Summary — ECLI:EU:C:2025:618
Date: 2025-08-01
Language of the case: Finnish
Court formation: Eighth Chamber
Procedure: Reference for a preliminary ruling
Origin: Finland

Translation C-452/24 – 1 
Case C-452/24 
Request for a preliminary ruling 
Date lodged:  
26 June 2024 
Referring court:  
Korkein oikeus (Finland) 
Date of the decision to refer:  
26 June 2024 
Appellant:  
Oy Lunapark Scandinavia Ltd 
Respondent:  
Hardeco Finland Oy 
  
KORKEIN OIKEUS 
(Supreme Court, Finland) 
ORDER 
 
APPELLANT Oy Lunapark Scandinavia Ltd 
RESPONDENT Hardeco Finland Oy 
SUBJECT MATTER Dispute over trade mark infringement 
DECISION OF THE SUPREME COURT 
Subject matter of the dispute 
1 The dispute concerns the interpretation of Directive (EU) 2015/2436 of the 
European Parliament and of the Council to approximate the laws of the Member 
States relating to trade marks (Trade Mark Directive). The question to be resolved 
is whether Article 10(2) and (3) of the Trade Mark Directive precludes the 
application of a national principle whereby the proprietor of a trade mark could 
forfeit the right to prohibit a third party from using a sign which is not a trade 
EN 
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mark, on the ground that, though being aware of the use of the sign, he or she has 
not taken action to prevent that use within a reasonable time. 
2 It is settled case-law of the Court of Justice with regard to the interpretation of the 
previous Trade Mark Directives 89/104/EEC and 2008/95/EC that Articles 5 to 7 
of those directives effect a complete harmonisation of the rules relating to the 
rights conferred by a trade mark and accordingly define the rights of trade mark 
proprietors in the European Union. Consequently, the Court has ruled that, save 
for the specific cases governed by Article 8 et seq. of that directive, a national 
court may not, in a dispute relating to the exercise of the exclusive right conferred 
by a trade mark, limit that exclusive right in a manner which exceeds the 
limitations arising from Articles 5 to 7 of the directive (order of 6 October 2015, 
Ford Motor Company, C-500/14, EU:C:2015:680, paragraph 44; judgment of 
19 September 2013, Martin Y Paz Diffusion, C-661/11, EU:C:2013:577, 
paragraphs 54 and 55). Article 9 of the previous Trade Mark Directives concerned 
forfeiture through acquiescence and largely corresponded in substance to 
Article 9(1) and (2) and Article 18(1) of the Trade Mark Directive. 
3 There is a need to interpret whether the Trade Mark Directive has harmonised the 
substance of the trade mark proprietor’s exclusive right to the effect that the trade 
mark proprietor could forfeit, on account of his or her inaction, the right under 
Article 10(2) and (3) of the directive to prohibit a use which infringes an exclusive 
right conferred by the trade mark only in cases falling within the scope of 
Article 18(1), which concerns the loss, arising from acquiescence, of the right to 
prohibit the use of the trade mark, and of Article 9(1) and (2), to which 
Article 18(1) refers. 
The relevant facts  
The pending dispute 
4 On the basis of an application dated 29 August 2003, trade mark No 246144 – 
DRACULA – was registered for Oy Lunapark Scandinavia Ltd (‘Lunapark’) in 
respect of confectionery and other products on 14 August 2009. Lunapark imports 
into Finland and distributes in Finland confectionery in packaging bearing the 
word ‘Dracula’ as well as pictorial signs representing the figure of Dracula. 
5 By means of a transaction effected on 31 October 2019, Hardeco Finland Oy 
(‘Hardeco’) acquired the business operations of Karkkimies Oy – Candyman Ltd 
(‘Karkkimies’), whereupon it began, in November 2019, to import into Finland 
and place on the Finnish market confectionery in packaging bearing the word 
‘Dracula’ and pictorial signs representing the figure of Dracula. Already before 
the registration of the DRACULA trade mark, Karkkimies and its predecessors 
had, over a long period, been importing and placing on the Finnish market 
confectionery in packaging bearing the abovementioned Dracula signs. 
Karkkimies had no exclusive right, based on registration or use, to the sign used 
LUNAPARK SCANDINAVIA 
 
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by it, nor was there any agreement between itself and Lunapark regarding the right 
to use the DRACULA trade mark. 
6 In an action brought before the Markkinaoikeus (Market Court), Lunapark applied 
for a ruling that Hardeco’s acts infringed Lunapark’s exclusive right to the 
DRACULA trade mark and sought a prohibitory injunction and damages in 
respect of that infringement. 
7 Hardeco contended that the action should be dismissed, to which end it argued, 
among other things, that Lunapark, through inaction, had forfeited the right to 
make any claims against Hardeco for infringement of the DRACULA trade mark, 
because Hardeco’s acts had merely been a continuation of Karkkimies’ activity, 
pursued over many years, which Lunapark had never taken any action to prevent. 
Market Court judgment of 21 December 2022 
8 In the contested judgment, the Market Court found that Hardeco’s acts were 
covered by the right conferred on Lunapark by the DRACULA trade mark to 
prohibit its use. Moreover, it held, the word ‘Dracula’ used by Hardeco on its 
product packaging was identical with the DRACULA trade mark and was used in 
relation to goods which were identical with those for which the DRACULA trade 
mark was registered. The Market Court also considered that the pictorial signs 
used by Hardeco gave rise to a likelihood of confusion on the part of the public 
with the DRACULA trade mark. On the basis of the evidence presented in the 
case, the Market Court therefore ruled that the many years of parallel use of the 
signs by Lunapark, on the one hand, and Karkkimies, on the other, had not 
eliminated the likelihood of confusion between the signs, because they had not 
resulted in the relevant public distinguishing between the confectionery imported 
by Lunapark and that imported by Hardeco. 
9 Nevertheless, in its judgment the Market Court dismissed Lunapark’s claims on 
the grounds that, on the basis of the general principles of civil law in Finland, 
Lunapark had, through its inaction, forfeited the right to pursue claims arising 
from the DRACULA trade mark relating to the acts of Hardeco. In the view of the 
Market Court, the provision contained in the Tavaramerkkilaki (Law on Trade 
Marks) regarding the consequences of inaction on the part of the trade mark 
proprietor was not applicable in the instant case because the defendant had had no 
exclusive right based on a trade mark to the sign used by it. In national civil law, 
however, the principle was widely applicable that an action or claim had to be 
brought or filed within a reasonable time following the date on which the person 
pursuing the claim had or should have become aware of the facts on which the 
claim was based. The Market Court found that Lunapark’s inaction with regard to 
the Dracula confectionery imported and sold by Karkkimies had continued over 
such a long time that the consequence, in principle, was a loss of its right and that 
no due cause had existed for Lunapark’s inaction. The fact that the sign in 
question was now being used by Hardeco instead of Karkkimies, the Market Court 
stated, had no legal significance, since Hardeco’s activity of importing and 
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distributing confectionery had related to the same products as Karkkimies’ 
activity, in respect of which Lunapark had been inactive. 
Appeal before the Supreme Court 
10 Lunapark lodged an appeal against the judgment of the Market Court. The 
Supreme Court admitted the appeal but limited it to the question whether 
Lunapark, through its inaction, had forfeited the right to pursue claims against 
Hardeco which were based on the assertion that the DRACULA trade mark had 
been infringed by the Dracula products in question having been imported and 
placed on the market in Finland. 
11 In its appeal, Lunapark argues that it has not forfeited its right to pursue claims 
against Hardeco for infringement of the DRACULA trade mark. The general 
principle of civil law in Finland to which the Market Court referred, Lunapark 
argues, cannot in any way be applied to the trade mark proprietor’s right to obtain 
a prohibitory injunction in the event of a trade mark infringement, because that 
would mean restricting that right of the trade mark proprietor in breach of the 
Trade Mark Directive. Lunapark also relies, in particular, on the argument that it 
certainly did take action against Hardeco’s acts within a reasonable time and that 
Hardeco is not entitled to benefit from Lunapark’s failure to act against 
Karkkimies. 
12 Hardeco opposes the appeal, particularly on the ground that no obstacle arising 
from the Trade Mark Directive or from any other source precludes the application 
of the consequence of inaction, based on the general principles of national civil 
law, on the right to obtain a prohibitory injunction. 
Applicable legislation 
EU law 
13 The key to assessing the dispute before the national court is how Article 10(2) and 
(3) of the Trade Mark Directive as well as Articles 18(1) and 9(1) and (2) of that 
directive are to be interpreted. 
Provisions of national law 
14 Under Paragraph 5(1) of the Tavaramerkkilaki (Law on Trade Marks) (544/2019), 
the following are among the signs that may not be used as a symbol of goods and 
services in trade without the consent of the trade mark proprietor: 
(1) a sign that is identical with a trade mark that has been registered or 
become established for the identical goods or services; 
LUNAPARK SCANDINAVIA 
 
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(2) a sign that causes a likelihood of confusion among the public because 
it is identical with or similar to a trade mark that has been registered or 
become established for identical or similar goods or services. 
Under Paragraph 6(1) of the Law on Trade Marks, the proprietor of a trade mark 
has the right to prohibit the use of a sign referred to in Paragraph 5 in trade when 
it involves using the sign in goods or services or in the packaging of goods or 
offering the goods, putting them on the market or importing them under the sign 
(points 1, 2 and 4). Under Paragraph 62 of the Law on Trade Marks, when a 
person infringes the exclusive rights to a trade mark, the court may prohibit that 
person from continuing or repeating the act on pain of a fine. The provisions in 
question are based on Article 10 of the Trade Marks Directive. 
15 Under Paragraph 63(1)(1) of the Law on Trade Marks, a court cannot prohibit the 
use of a later trade mark when the proprietor of the earlier trade mark has been 
inactive within the meaning of Paragraph 15. Under Paragraph 15, which concerns 
the effect of inactivity on the part of the trade mark proprietor, exclusive rights to 
a trade mark are retained alongside an earlier trade mark if: 
(1) the later trade mark registration application was filed in good faith or 
the later established trade mark was introduced in good faith; and 
(2) the proprietor of the earlier trade mark, within five years of learning of 
the use of the later trade mark, has not taken action to prevent the use of the 
later trade mark. 
If a trade mark registered later was only used for some of the goods or services for 
which it was registered, the later exclusive rights are to apply to use of the trade 
mark only in respect of those goods or services. The provisions are based on 
Article 9(1) and (2) and Article 18(1) of the Trade Mark Directive. National law 
contains no provisions other than the foregoing under which a trade mark 
proprietor, on account of his or her inactivity, could forfeit the right to prohibit 
continued infringement of his or her exclusive rights conferred by the trade mark. 
16 A limitation period for entitlement to compensation and damages for infringement 
of rights conferred by a trade mark is laid down by Paragraph 70 of the Law on 
Trade Marks; the first subparagraph of that provision stipulates that compensation 
and damages may be claimed only for the five years preceding the institution of 
proceedings. The right to compensation and damages is forfeited if an action for 
these has not been instituted within five years of the damage arising. 
17 In national civil law, the principle applies that an action or claim must be brought 
or filed within a reasonable time following the date on which the person pursuing 
the claim has or should have become aware of the facts on which the claim is 
based. That principle is reflected in numerous statutory provisions which specify a 
precise time limit for bringing an action or pursuing a claim. The principle, 
however, has also been applied in a number of cases without being based on 
written law, for example in cases concerning matrimonial property law and the 
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law of succession as well as in breach of contract cases (e.g. KKO 2017:49 and 
KKO 2018:38). On the question of the application of that principle to trade mark 
disputes, however, no established viewpoint is discernible from either case-law or 
other sources of law.  
The need to refer the question for a preliminary ruling 
18 The Supreme Court is seised of a trade mark infringement case in which, first, the 
question is to be resolved as to whether the abovementioned general principle is 
applicable at all to a right to obtain a prohibitory injunction for trade mark 
infringement or whether the consequences of inaction on the part of the trade 
mark proprietor on the right to obtain a prohibitory injunction under trade mark 
law are conclusively regulated in the Law on Trade Marks. A reasoned settlement 
of the case requires an interpretation of the provisions of the Trade Mark Directive 
regarding the right to obtain a prohibitory injunction conferred by a trade mark 
and the restrictions and exceptions which apply to that right. No clear answer 
emerges from the case-law of the Court of Justice to the question raised by the 
present case. 
Background to the question referred for a preliminary ruling 
19 It is settled case-law of the Court that the exclusive right under Article 10 of the 
Trade Mark Directive (Article 5 of the previous Trade Mark Directives) was 
conferred in order to enable the trade mark proprietor to protect his or her specific 
interests as proprietor of that mark, that is, to ensure that the trade mark can fulfil 
its functions. Those functions include not only the essential function of the trade 
mark, which is to guarantee to consumers the origin of the goods or services in 
question, but also its other functions, in particular that of guaranteeing the quality 
of those goods or services or those of communication, investment or advertising. 
Therefore, the exercise of that right must be reserved to cases in which another 
party’s use of the sign adversely affects or is liable adversely to affect one of the 
functions of the trade mark (see, for example, the judgments of 19 September 
2013, Martin Y Paz Diffusion, C-661/11, EU:C:2013:577, paragraph 58, and of 
22 September 2011, Budějovický Budvar, C-482/09, EU:C:2011:605, 
paragraph 71). 
20 The proprietor of a trade mark who tolerates the use of a sign which is identical 
with the trade mark or which originally created a likelihood of confusion may 
therefore, as a result of his or her acts, forfeit his or her right to prohibit a third 
party from using such a sign if, for example, the use tolerated by the trade mark 
proprietor has eliminated the likelihood of confusion or has resulted in a situation 
in which the use of the sign by the third party does not or cannot otherwise 
adversely affect the functions of the trade mark (see, for example, the judgments 
of 3 September 2009, Aceites del Sur-Coosur v Koipe, C-498/07 P, 
EU:C:2009:503, paragraph 82; of 22 September 2011, Budějovický Budvar, 
LUNAPARK SCANDINAVIA 
 
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C-482/09, EU:C:2011:605, paragraphs 70, 82 and 84; and of 27 April 2006, Levi 
Strauss, C-145/05, EU:C:2006:264, paragraphs 30 and 32 to 34). 
21 By contrast, the Court has not dealt in its case-law with the question whether 
Article 10(2) and (3) of the Trade Mark Directive precludes the application of a 
national principle such as that referred to in paragraph 17 above in a case relating 
to the infringement of a trade mark. The question therefore arises whether, in 
cases other than forfeiture of the right to obtain a prohibitory injunction on 
account of acquiescence to the use of a sign, as prescribed by the Trade Mark 
Directive, a trade mark proprietor may likewise forfeit, through inaction, his or 
her right to prohibit a third party from using a sign in a manner which adversely 
affects or is liable adversely to affect one of the functions of the trade mark. 
22 The Court has, however, examined the restriction of a trade mark proprietor’s 
right to obtain a prohibitory injunction based on a national provision whereby the 
proprietor of a right must not exercise that right wrongfully or abusively. The 
Court found that, where a third party uses signs identical with trade marks without 
the consent of the trade mark proprietor, who has expressed his or her wish to 
exercise his or her exclusive right against the third party, the national court has to 
assess whether that use adversely affects or is liable adversely to affect one of the 
functions of the trade marks at issue. If it were established that such a detriment or 
risk of detriment exists, the Court ruled, it would have to be held that depriving 
the trade mark proprietor of the possibility of exercising his or her exclusive right 
against that use exceeds the limitations arising from Articles 5 to 7 of Directive 
89/104/EEC. That is why the Court determined that Article 5 of Directive 
89/104/EEC precluded a proprietor of trade marks which, in a situation where 
there had been use shared with a third party, had consented to the use by that third 
party of signs which were identical to its marks in respect of certain goods in 
classes for which those marks were registered and which no longer consented to 
that use, from being deprived of any possibility of asserting the exclusive right 
conferred upon it by those marks against that third party (judgment of 
19 September 2013, Martin Y Paz Diffusion .C-661/11, EU:C:2013:577, 
paragraphs 60 and 62). 
23 In its Martin Y Paz Diffusion judgment (paragraph 55), the Court referred, with 
regard to limitation of the exercise of the exclusive right conferred by a trade 
mark, to the cases governed by Article 8 et seq. of Directive 89/104/EEC as 
specific cases in which limitation was permissible in a dispute. Accordingly, that 
reference should also apply to Article 9, which relates to limitation in 
consequence of acquiescence. It does not emerge clearly from the existing case-
law of the Court, however, whether the substance of the rights conferred by a 
trade mark, including the relevance and consequences of acquiescence, is 
harmonised in such a manner that the trade mark proprietor could forfeit, through 
inaction, his or her right to obtain a prohibitory injunction only in the cases 
covered by Article 18(1) and Article 9(1) or (2) of the Trade Mark Directive. 
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Question referred 
24 After giving the parties the opportunity to make observations on the content of the 
request for a preliminary ruling, the Supreme Court has decided to stay the 
proceedings and to refer the following question to the Court of Justice for a 
preliminary ruling: 
Does Article 10 of Trade Mark Directive (EU) 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 the Trade Mark 
Directive, could forfeit the right conferred on him or her by Article 10(2) and 
(3) 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? 
Following receipt of a preliminary ruling, the Supreme Court will give judgment 
on the case. 
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