Opinions
Dracula bites back before CJEU: no room for national principles on trademark acquiescence over the limits set by EU legislation.
With its judgment of 1 August 2025 (Case C‑452/24), the Court of Justice of the European Union (CJEU) sank its teeth into a thorny trademark issue: can a trademark owner lose the right to oppose unauthorized use of a similar sign due to prolonged inactivity, outside the scope of the acquiescence provisions expressly laid out in EU legislation?
A matter of (in)action: testing the limits of Directive (EU) 2015/2436
The dispute arose between Lunapark Scandinavia Oy Ltd (“Lunapark”), owner of the registered trademark “DRACULA” for confectionery products, and Hardeco Finland Oy (“Hardeco”), which continued using the same branding after acquiring a third-party company previously active in the same market.
Hardeco argued that Lunapark’s failure to act over time amounted to forfeiture of its enforcement rights under Finnish civil law.
The CJEU was asked to determine whether such national principles could limit the exclusive rights conferred to a trademark owner by Article 10 Directive (EU) 2015/2436, even in circumstances other than those covered by Article 18(1) and Article 9(1) or (2) Directive (EU) 2015/2436.
In simple terms, these latter provisions establish that a trademark owner may lose the right to challenge the use of a later registered trademark if they have knowingly tolerated its use for five consecutive years in a Member State.
More details: Dracula in the candy aisle
Lunapark is the owner of the Finnish trademark, filed on 2003, and registered in 2009, for confectionery products. This company imports and markets these products in Finland with packaging bearing the ‘DRACULA’ word mark and figurative signs representing the character of Dracula.
| Dracula candies sold by Lunapark Scandinavia Oy Ltd |
 |
Prior to this, Karkkimies Oy – Candyman ltd had marketed similar products under the same name without holding any formal trademark rights or an agreement with Lunapark regarding the use of the trademark. In 2019, Hardeco acquired Karkkimies and continued using the “Dracula” branding.
| Dracula candies sold by Hardeco Finland Oy |
 |
In 2020, Lunapark brought infringement proceedings before the markkinaoikeus (Finnish Market Court), seeking a declaration that Hardeco’s conduct infringed its exclusive rights to the ‘DRACULA’ trademark, an injunction to prohibit further unauthorized use, and compensation for the damages.
Hardeco invoked a Finnish legal principle requiring rights holders to act within a ‘reasonable time’, arguing that Lunapark’s prolonged inaction barred enforcement.
The Finnish Economic Court agreed, but Lunapark appealed, asserting that such national doctrines cannot override the harmonized framework established by Directive 2015/2436.
Harmonization prevails: no national exceptions for inactivity-based forfeiture
The CJEU decision does not call into question the inapplicability to the case at hand of Article 18(1) in conjunction with Article 9(1) or (2) Directive (EU) 2015/2436. The CJEU held that, although the use of the ‘DRACULA’ sign by Karkkimies began prior to Lunapark’s registration of the trademark, neither Karkkimies nor Hardeco acquired any exclusive rights over the sign – neither through registration nor through use. This circumstance must, in any event, be verified by the referring court.
Nonetheless, the central issue raised by the Finnish Court was whether Lunapark’s prolonged inactivity could, in itself, justify a limitation of its trademark rights based on a general principle of national law—specifically, the notion of forfeiture due to inaction.
The CJEU firmly rejected this approach, holding that national courts cannot impose additional restrictions beyond those expressly provided in Article 18(1) and Article 9(1) or (2) Directive (EU) 2015/2436. Such an interpretation would undermine the directive’s objective of ensuring a full harmonization of the conditions under which exclusive rights may be limited.
In short, the CJEU reaffirmed that EU trademark law protects registered trademarks uniformly across European Union—and Dracula’s bite still holds legal force.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Valentina D’Adda, Trainee
E: v.dadda@nmlex.it
T.: +39 026575181
Publish date: