The Finnish Supreme Court has ruled on an important question concerning whether the proprietor of a registered trade mark can prohibit the use of an unregistered trade mark, even though both marks had been used for identical goods, for salmiakki candies, in parallel for decades.

Jukka Palm and Marianna Karjanlahti-Perini summarise the case.

The first instance decision

The case concerned the trade mark DRACULA. Lunapark (Company A) obtained a trade mark registration for DRACULA on 14 August 2009 covering (among other things) confectionery. It used the mark in the importation and sale of confectionery in Finland.

Karkkimies Oy (Candyman) (Company X) and its predecessors had imported and sold confectionery in Finland using Dracula identifiers on and off since the 1980s. Hardeco (company B) purchased company X’s business in 2019 and continued the activity.

When company A sought an injunction to prevent company B from continuing the trade mark infringement in 2020, company B argued that because company A had not prohibited company X from using the Dracula identifiers in its business, through its passivity, it had lost the right to bring claims against company B.  

In a decision in 2022, the Finnish Market Court agreed. It held that company B’s conduct in principle fell within company A’s right to prohibit, despite the longstanding concurrent use. Nevertheless, the claim was dismissed because company A had lost the right to invoke infringement under Finnish national law due to its passivity under which an action must be brought within a reasonable time from when the rightsholder has obtained, or ought to have obtained, knowledge of the infringement.

Company A appealed to the Supreme Court. It argued that its passivity towards Company X should not be interpreted as passivity towards the new owner company B.

CJEU ruling

The Finnish Supreme Court requested a preliminary ruling from the CJEU on whether the substance of the rights conferred by a trade mark, including permitted use and its consequences, is harmonised to the extent that a trade mark owner could lose the right to prohibit use by reason of passivity only in situations covered by Article 18(1) and Article 9(1) or (2) of the Trade Marks Directive.

In its judgment on 1 August 2025 (Case C-452/24), the CJEU held that the Trademark Directive (notably Articles 10 and 18) is fully harmonising in this respect, and a Member State may not apply a general national principle that leads to loss of trade mark rights in situations other than those expressly provided for in the directive, such as statutory acquiescence.

In other words, mere “exceeding a reasonable time” cannot extinguish the right to bring an action. The matter was considered so clear in this respect that an Advocate General’s opinion was not issued.

Supreme Court

Following the CJEU ruling (KKO:2026:30), the Supreme Court found that under Union law mere passivity cannot result in loss of trade mark rights, stating:

The Court of Justice’s preliminary ruling implies that A cannot be regarded as having lost, solely by reason of its passivity, the right to prohibit B from using the Dracula identifiers. Accordingly, the Market Court should not have dismissed the claim on the ground that A had, through its passivity, lost the right to assert claims based on its trade mark exclusive rights.

It further noted: “The Supreme Court is not seized of other grounds on which B has asserted that the matter does not amount to an infringement of A’s trade mark rights.” Consequently, B was prohibited from using the disputed trade marks for confectionery, and the case was remitted to the Market Court.

This decision confirms that the national “bring the action within a reasonable time” principle, rather heavily relied on at least in Finland, cannot be used to circumvent the exhaustive principles provided in the directive.

The case further illustrates the importance of registering key trade marks and the risks of relying on unregistered signs, even if they have been used for many years.

Marianna Karjanlahti-Perini is a European trade mark attorney and Jukka Palm is a partner and attorney with Berggren. Marianna is also a member of the MARQUES European Trade Mark Law and Practice Team.

MARQUES will host the Luxury and Famous Brands Symposium in Kraków, Poland on 1 and 2 December 2026.

The Symposium will bring together brand owners, IP practitioners and others to discuss the latest developments impacting luxury and famous brands, with a particular focus on brand heritage and the value of brand identity over time and across borders.

Topics covered will range from the protection and revival of brand heritage and iconic products to cultural heritage and recent legal developments affecting luxury and famous brands.

More details about the Symposium, including the programme, speakers and registration information, will be available after the MARQUES Annual Conference in September and will be shared on the MARQUES blogs.

In the meantime, please note the date in your calendar if you are interested in attending.

The photo is from the MARQUES Luxury Brands Symposium held in Vienna in 2024

WIPO has announced its latest webinars on the Madrid System, which take place on various dates over the next two months.

The webinar topics, times and languages are:

Goods and services manager: Classification made easy

Korean (Friday, August 21 | 08:00)

Chinese (Thursday, August 27 | 10:00)

Japanese (Thursday, September 17 | 09:00)

Madrid System “replacement”: An underused feature that simplifies portfolio management and cuts renewal costs

English (Wednesday, September 16 | 16:00)

The Madrid System for SMEs: A simple path to protecting your brand in global markets

French (Wednesday, September 23 | 16:00)

Spanish (Wednesday, September 30 | 16:00)

Managing international trademark registrations: Subsequent designation and renewal

Chinese (Thursday, September 24 | 10:00)

All times are Geneva (CEST) time. All the webinars are free and include live Q&A sessions with Madrid System experts.

For more information, and to register, visit the Madrid System Public Webinars page on the WIPO website.

The Madrid Protocol will enter into force in Saudi Arabia on 8 October 2026, after the country deposited its instrument of accession on 8 July.

With this development, the Madrid System has 117 members and covers 133 countries, including five of the six Gulf Cooperation Council countries (Bahrain, Oman, Qatar, Saudi Arabia and the UAE).

The instrument of accession was accompanied by:

• the declaration referred to in Article 5(2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of this time limit;
• the declaration referred to in Article 8(7)(a) of the Madrid Protocol, whereby Saudi Arabia wants to receive an individual fee when it is designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration where Saudi Arabia has been designated, instead of a share in the revenue produced by the supplementary and complementary fees;
• the notification under Rule 27bis(6) of the Regulations under the Madrid Protocol, whereby the Office of Saudi Arabia will not present to the International Bureau of WIPO requests for the division of an international registration in respect of Saudi Arabia because its law does not provide for the division of registrations of a mark; and
• the notification under Rule 27ter(2)(b) of the Regulations under the Madrid Protocol, whereby the Office of Saudi Arabia will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division because the law of Saudi Arabia does not provide for the merger of registrations of a mark

The amounts of the individual fee under Article 8(7)(a) will be notified separately.

Read more in the announcement on WIPO’s website.

Map of Saudi Arabia created by Norman Einstein and licensed under Creative Commons 

Counterfeit goods worth more than €17 million have been seized during Joint Action Day (JAD) Pirates 4.

The international operation was led by the European Border and Coast Guard Agency (Frontex) in cooperation with EUIPO, Europol, EU Member States and non-EU countries.

It targeted criminal networks involved in the trade of counterfeit goods with coordinated checks at border crossings, ports, airports and logistics hubs across the EU, Serbia, Ukraine and the UK.

More than 1.7 million counterfeit and undeclared items were seized, including counterfeit toys, clothing, perfumes, jewellery, watches, mobile phones, pharmaceuticals, detergents, e-cigarettes, tobacco products, electronics and vehicle parts.

Fake clothing products accounted for over 0.5 million items seized, worth over €9 million in total. At Kapitan Andreevo in Bulgaria, 41,280 counterfeit Nike-branded textile garments were seized in an HGV coming from Türkiye. They included fake Croatian football team shirts.

Over 100,000 counterfeit cosmetics and perfume items were seized, with an estimated value of more than €1 million. €34,700 worth of fake perfumes were seized at the Polish-Ukrainian border in Smilnytsia, Ukraine

A sea container containing 83,738 counterfeit perfumes and cosmetics was discovered at the port of Naples. Counterfeit cosmetic products, including 2,880 Burberry lipsticks and 1,440 Christian Dior lipstick sets, with an estimated market value of €374,400, were found in a random inspection of a sea container at the port of Hamburg Customs office.

Almost 1000,000 toys were seized, with a value of more than €600,000. In Spain, almost 2,000 items were seized in Leganés (Madrid) from China, while Portugal intercepted more than 28,000 fake Monopoly board games in a sea container from China at the Port of Sines.

243,860 cans of fake energy drinks were seized. Bulgaria, the Czech Republic, and the UK reported seizures of fake non-alcoholic beverages (Red Bull) with identical packaging. One container was detected and seized at the port of Burgas, a second was detected near London, and the third place of detection was a shop in the Czech city of Brno.

Read more about the JAD Pirates 4 on the EUIPO website here. Photos by Frontex/EUIPO

The latest episode of the Talking MARQUES podcast previews the 40^th Annual Conference, which takes place in Lisbon, Portugal from 22 to 25 September 2026.

Three member of the MARQUES Programming Team take part in the podcast: Chair Claire Lehr of Edwin Coe LLP, Claus Eckhartt of Bardehle Pagenberg and Bahia Alyafi of Alyafi IP Group.

They mention some of the plenary sessions they are particularly looking forward to, and provide some insights into those they are taking part in themselves.

They also discuss the range of workshops available, some of the notable speakers at this year’s Annual Conference and a few of the social activities.

Finally, they highlight something that’s special about this year’s Annual Conference.

The podcast is recommended for anyone who has already registered for the Annual Conference and wants to find out more about the programme, as well as those who have yet to book their place.

You can listen to the podcast on the MARQUES website here and on Spotify.

So far, more than 840 people from 73 countries have registered for the Annual Conference and it is nearly sold out. If you have not yet booked your place, do so on the MARQUES website soon!

Mutlu Yıldırım Köse and İrem Girenes Yücesoy report on a recent decision of the Turkish Patent and Trademark Office.

Trade mark squatting has unfortunately become increasingly common in Türkiye in recent years. Bad-faith applicants often identify trade marks that are registered and genuinely used abroad but have not yet been registered in Türkiye, file applications for those marks in their own names and then attempt to sell the registrations or present themselves as the rightful proprietors of the trade marks. In another common scenario, bad-faith applicants use the registrations they have unfairly obtained to prevent the real right owners from entering the Turkish market.

Fortunately, the Turkish Patent and Trademark Office continues to adopt a broad and rights-holder-friendly approach when assessing bad faith in oppositions filed against trade mark applications that are identical to distinctive trade marks registered and used abroad.

The absence of prior registration or use of a mark in Türkiye does not, by itself, prevent a finding of bad faith. In the oppositions filed against trade mark applications that are identical to a distinctive trade mark registered and used abroad and are of such a nature that it could not reasonably have been created coincidentally, the Office may accept bad faith even in the absence of any concrete evidence demonstrating the bad faith of the applicant, solely on the basis that the trade mark registered and used abroad has been copied identically.

TM application 2025/043581	Lala Berlin fashion brand

Lala Berlin case

A very recent decision of the Office (E-71248886-130-260172511, dated 6 March 2026) confirms this approach. In this case, a trade mark application numbered 2025/043581 was filed before the Office for a mark that was identical, both in its word form and in its distinctive stylised form, to an originally created Berlin-based fashion brand.

Although the Lala Berlin trade mark enjoyed extensive international protection through registrations obtained in numerous countries and widespread use abroad, it had been neither registered nor used in Türkiye as of the date on which the dispute arose.

Apart from the fact that the trade mark application in question was an identical reproduction of the earlier trade mark, there was no additional evidence specifically demonstrating the applicant’s bad faith.

What was, however, beyond dispute was that the subject application is identical to the Lala Berlin trade mark and enjoyed protection through international trade mark registrations and extensive use in the apparel and fashion industry abroad.

In this respect, the opposition relied not only on the genuine right ownership on the trade mark but also on the fact that the application constitutes a deliberate reproduction of the trade mark registered and used abroad, extending from the identical word element to its stylisation and positioning.

It was argued that the filing of such an application for use in the very same field of business cannot reasonably be regarded as an act undertaken in good faith. It was further emphasised that, given the limitless freedom available in selecting a trade mark, the adoption of the identical wording and an identical overall composition can hardly be explained as a mere coincidence.

Following its examination under Article 6/9 of the Industrial Property Code no 6769, the Trademarks Directorate of the Office concluded that the applicant had "failed to act in accordance with the principles of honest commercial practices with the intention of knowingly obtaining an unfair advantage" and accordingly rejected the application in its entirety on the grounds of bad faith.

Clear and consistent approach

This decision demonstrates that the Office has adopted a clear and consistent approach in assessing bad faith in trade mark applications seeking to identically reproduce trade marks that are registered and used abroad but have not yet been registered or used in Türkiye.

Accordingly, whether or not a trade mark is registered in Türkiye, it is essential to monitor foreign trade mark portfolios, regularly review the Turkish Trademark Bulletin and file an opposition particularly on the ground of bad faith when an identical trade mark application is identified.

Otherwise, once such bad-faith applications proceed to registration, the rightful owner will be required to seek their invalidation through court proceedings before entering the Turkish market.

Mutlu Yıldırım Köse is a partner and İrem Girenes Yücesoy is a managing associate with Gün+ Partners in Turkey. Mutlu is a member of the MARQUES Cyberspace Team and İrem is a member of the Anti-Counterfeiting and Parallel Trade Team. The authors represented Copenhagen Studios GmbH, the owner of the Lala Berlin trade mark, in the opposition proceedings discussed in this article