The Supreme Court of Finland (Korkein oikeus) has made a new reference for a preliminary ruling to the Court of Justice of the European Union concerning the Trademark Directive (Directive 2015/2436).
In the case, Case C-452/24, Lunapark Scandinavia, the final instance national court wants to know whether the Directive precludes (or not) the application of national law that could cause a trademark holder to lose their IP rights to enforce the trademark due to inaction
Background and facts
The case involves Oy Lunapark Scandinavia Ltd, which owns the trademark “DRACULA” registered for confectionery products. It has been using this trademark in Finland since its registration in 2009.
Hardeco Finland Oy, which acquired the business of Karkkimies Oy in 2019, began importing and selling confectionery products in Finland under the same “DRACULA” mark. Karkkimies had been using the “DRACULA” mark for a long time, even before Lunapark’s trademark registration, but without any formal trademark rights.
Legal proceedings at first instance
Lunapark filed a legal proceedings in the Market Court of Finland (Markkinaoikeus) in 2020, claiming that Hardeco’s use of the “DRACULA” mark infringed on its trademark rights.
Hardeco argued that Lunapark had lost its right to enforce the trademark due to its prolonged inaction against Karkkimies’ use of the mark.
At first instance, the Market Court ruled in favour of Hardeco, stating that Lunapark’s inaction constituted a loss of rights under national legal principles, which require claims to be made within a reasonable time.
Proceedings before the Supreme Court, and referral to the CJEU
Lunapark appealed to the Supreme Court, which was granted leave to appeal on narrow grounds. The question concerns whether Lunapark had lost its right to enforce the trademark due to its inaction.
The Supreme Court of Finland stated it it to seek clarification from the CJEU on whether Article 10 of the Trademark Directive precludes the application of national principles that would cause a trademark holder to lose their right to enforce the trademark due to inaction.
Specifically, the final instance court asks whether the Trademark Directive allows for such a loss of rights outside the specific circumstances outlined in Articles 9 and 18 of the Directive, which deal with the consequences of allowing the use of a trademark and the loss of rights due to non-use.
The Supreme Court, in its order for reference, points out that allowing national law of inaction to limit trademark rights could undermine the harmonisation achieved by the Directive and create inconsistencies in the protection of trademark rights.
The question referred
The question has been formulated as follows:
‘Does Article 10 of Trademark 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?‘
Analysis
The eventual judgment of the CJEU will help to clarify whether trademark holders can lose their rights due to inaction under national law, or if the Trademark Directive provides a comprehensive framework that precludes such limitations.
Read the order for reference
The order for reference of the Supreme Court of Finland (Korkein oikeus) in Case C-452/24, Lunapark Scandinavia can be found on the CJEU’s website here.