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.