Delay Doesn’t Mean Defeat: What Lunapark v Hardeco Means for Trade Mark Owners

In this article, Kate Marrs examines the recent preliminary ruling of the Court of Justice of the European Union (CJEU) in Lunapark Scandinavia Oy Ltd v Hardeco Finland Oy (Case C-452/24). The ruling considers the extent to which EU member states can override EU Trade Mark Directive 2015/2436 (the “TM Directive”) to limit the rights of trade mark owners to bring claims when they have delayed taking action. 

In summary, the ruling confirms that the only restrictions which can prevent a trade mark owner from enforcing their national trade marks rights are those set out in the TM Directive. Individual member states cannot impose additional restrictions. This provides some certainty for owners of national trade marks in EU member states (who can expect a uniform approach to be applied). 

Background

Lunapark owns a Finnish trade mark for the word DRACULA for confectionery goods. Hardeco had sold confectionary using the identical DRACULA sign since before Lunapark’s registration, but had no registered or acquired rights. Lunapark issued a trade mark infringement claim against Hardeco in the Finnish courts.  

The Finnish Market Court dismissed Lunapark’s claim because it did not bring its claim within a ‘reasonable time’ of becoming aware of the alleged infringement, as required by Finnish national law.

Lunapark appealed to the Finnish Supreme Court on the basis that Finnish national law should not apply, as it conflicts with the TM Directive. Under the TM Directive, trade mark owners can only be stopped from taking infringement/invalidity action where they have acquiesced (i.e. delayed taking action) in specific circumstances, i.e. where:

• the allegedly infringing mark is registered
• the trade mark owner was aware of the allegedly infringing use 
• the trade mark owner acquiesced for a period of 5 consecutive years¹

Key Issues

The Finnish Supreme Court referred the matter to the CJEU for a preliminary ruling on whether national member state law can limit the rights of national trade mark owners under the TM Directive (and therefore whether Finnish national law could validly prevent trade mark owners from bringing a claim within a ‘reasonable time’).  

Outcome

The CJEU’s preliminary ruling held that EU member states cannot introduce national law which limits the rights of national trade mark owners beyond any restrictions set out in the TM Directive, as this would undermine the TM Directive’s objective to harmonise trade mark law throughout the EU. 

As such, national trade mark owners in EU member states retain enforcement rights unless the specific EU conditions for acquiescence are met. 

On the facts, the Finnish Supreme Court must now apply the CJEU’s interpretation. 

UK context

The UK has already diverged from EU case law on this issue, having adopted a more flexible approach to statutory acquiescence in Industrial Cleaning Equipment v Intelligent Cleaning Equipment [2023] EWCA Civ 1451. 

In addition, under English law, litigants are potentially subject to various equitable restrictions on enforcing their rights, such as common law acquiescence, laches and estoppel which would appear to run contrary to this most recent decision of the CJEU.

It remains to be seen whether the UK approach will continue to diverge post-Brexit, and the applicability of the ruling to EU trade marks (which fall outside the scope of the TM Directive).

Key Takeaways / Comment

• The ruling provides some certainty for owners of national trade marks in EU member states (who can anticipate a uniform approach to acquiescence throughout the EU)
• The ruling raises questions about how the UK approach will continue to diverge post-Brexit, and the applicability of the ruling to EU trade marks (which fall outside the scope of the TM Directive). Given this uncertainty, trade mark owners are encouraged to take enforcement action as soon as possible and watch the register for infringing marks
• The ruling serves a reminder that brand owners should look to register their marks at an early stage to avoid potentially expensive disputes