Two judgments of the CJEU rendered on August 1, 2025, dealt with significant trademark issues of practical importance. The first case, Lunapark/DRACULA, presented the question whether national law principles of acquiescence are applicable beyond what is provided for in the Trademarks Directive. In the second case, Tradeinn/ED, the question was whether possession of infringing goods in a foreign country amounts to trademark infringement.
1. The Lunapark/DRACULA Case – Laches and acquiescence in trademark law – is there room for national rules?
On August 1, 2025, the CJEU rendered its judgment in Case C-452/24, Lunapark Scandinavia Oy Ltd v. Hardeco Finland Oy. The Supreme Court of Finland had referred the following question to the CJEU:
Does Article 10 of Directive 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 that Directive, could forfeit the right conferred on him or her by Article 10(2) and (3) thereof 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?
Article 10 of the Trademarks Directive provides for exclusive rights of the proprietor of a registered trademark. Article 18 deals with so-called intervening rights, i.e., rights acquired at a time when the earlier trademark could not be enforced against the later registered mark, and Article 9 provides for a statutory acquiescence rule (five years concurrent use) applicable in conflicts between registered trademarks.
The question arose in a case where Lunapark, owner of a Finnish trademark for DRACULA, had brought an infringement action against Hardeco for the use of the same mark. That mark had been used for many years prior to Lunapark’s registration by a company later acquired by Hardeco. The Market Court found the signs identical and likely to cause confusion. However, the court dismissed Lunapark’s claims on the ground that Lunapark’s long inactivity in objecting to the use made by Hardeco’s predecessor effectively barred enforcement under a Finnish private‑law principle (not the statutory acquiescence rule). Lunapark appealed to the Supreme Court, arguing that applying that national principle would unlawfully restrict the exclusive rights conferred by Directive 2015/2436.
The Court – in a judgment by the 8th Chamber (composed of three judges), and without an opinion by an Advocate General – answered the question as follows:
Article 10 of Directive (EU) 2015/2436 must be interpreted as precluding the applicability of a general principle of national law which provides that the right of the proprietor of a registered trade mark to prohibit the use by a third party of a sign identical with, or similar to, that trade mark for goods identical with or similar to those for which that mark was registered is precluded, in a situation other than that referred to in Article 18(1) of that directive, read in conjunction with Article 9(1) or (2) thereof.
The reasons given for this interpretation of the Directive are found in two paragraphs of exceptional brevity, as follows:
36 In that regard, as is apparent from the foregoing and as the Finnish Government, moreover, submits in its written observations, a national court cannot, in the context of a dispute concerning the exclusive right conferred by a trademark, limit the exercise of that right beyond what is provided for in Article 18(1) of Directive 2015/2436, read in conjunction with Article 9(1) or (2) thereof.
37 A contrary interpretation of Article 10 and Article 18(1) of Directive 2015/2436 would undermine the objective pursued by that Directive, which consists, inter alia, as stated in recital 10 of that directive, in ensuring uniform protection for registered trademarks in the legal systems of all the Member States.
What is said to be “apparent from the foregoing” is a brief recital of the contents of Articles 10, 18, and 9 of the Directive, with the latter two Articles applying only to conflicts between registered trademarks.
Comments
The interpretation of the Trademarks Directive as providing “absolute” rules from which Member States may not detract or to which they may not add unless authorized by the Directive has a solid basis in the precedents. For example, the CJEU held that Member States may not add invalidity grounds not authorized by the Directive (Case C-371/18, Sky, para. 83-85). It is also arguable that the five-years concurrent use rule in Article 9 of the Directive precludes Member States from applying their national acquiescence rules to conflicts between registered trademarks, although the opposite position is also well established. For example, the German Trademark Law provides in its Section 21 (4) that “Paragraphs 1 to 3 [the statutory acquiescence rules] leave unaffected the application of general principles of “Verwirkung” [laches and acquiescence].” This has been a provision of German trademark law since 1995 and has never been challenged. What the CJEU has done in the DRACULA case is however entirely different – it has basically liberated the proprietors of registered trademark from their obligations arising under national civil law rules, such as the obligation to conduct their affairs in good faith (Sec. 242 of the German Civil Code). It is also submitted that limiting a proprietor’s relief by requiring that he must conduct himself as all other participants in the market, observing rules such as one must not sleep on one’s rights, does not interfere with the notion that trademark proprietors must enjoy the same protection in all Member States – limiting the DRACULA owner in Finland for having slept on its rights does not affect the protection of trademarks in neighboring countries or anywhere else.
2. The Tradeinn/ED Case – Possession and stocking of goods for marketing in another Member State
On August 1, 2025, the CJEU rendered its judgment in Case C-76/24, Tradeinn Retail Services S.L. v. PH. The German Federal Court of Justice had referred the following questions to the CJEU:
(1) Is a proprietor of a national trademark, under Article 10(3)(b) of [Directive 2015/2436] allowed to prohibit a person in another country from stocking goods that infringe his or her trademark for the purpose of offering those goods or putting them on the market in the country in which the trade mark is protected?
(2) Does the concept of stocking within the meaning of Article 10(3)(b) of [Directive 2015/2436] depend on the possibility of actually accessing goods in infringement of [the] trademark or is the possibility of being able to influence the person with actual access to those goods sufficient?
The questions arose in an action brought by PH in a German court for infringement of figurative trademarks registered in Germany containing the letters ED. Tradeinn, established in Spain, advertised and sold identical goods under a mark identical to those marks via scubastore.com and amazon.de. PH sought an injunction against use, sale, packaging, distribution, and promotion. The Court of Appeal (Nürnberg) extended the injunction to prohibit distributing or stocking the goods for that purpose, even though Tradeinn held the goods in Spain. Tradeinn appealed to the Bundesgerichtshof.
The Court – in a judgment by its Third Chamber (composed of five judges), and with an Opinion by Advocate General Spielmann delivered on March 27, 2025 – gave the following answers:
1. Article 10(3)(b) of Directive (EU) 2015/2436 must be interpreted as meaning that the proprietor of a trademark protected in one Member State may prohibit a third party from stocking, in the territory of another Member State, goods under a sign in the circumstances referred to in Article 10(2) of that Directive in order to offer those goods for sale or to put them on the market in the Member State in which that mark is protected.
2. Article 10(3)(b) of Directive 2015/2436 must be interpreted as meaning that in order to ‘stock’, within the meaning of that provision, goods under a sign in the circumstances referred to in Article 10(2) of that directive, it is sufficient to have control or direction over the person who has direct and actual control over those goods.
In its rather lengthy judgment, the CJEU refers to its case law on online marketing and related infringement issues. It points out that stocking the goods for the purpose of offering them or placing them on the market constitutes one of the acts that the Trademark Directive prohibits, and that the stocking takes place in a Member State other than the one where the goods are offered or to be marketed is of no relevance: “ … the proprietor of a trademark may prohibit a third party from offering, inter alia by means of online advertising, goods under that sign notwithstanding the fact that that third party, the server of the website which it uses or those goods are located outside the Member State of registration, if that offer is targeted at consumers in the territory of that Member State. In such a situation, that proprietor is also entitled to prohibit that third party from stocking those goods outside that territory if that stocking constitutes a preliminary step to the making of such an offer or its implementation, with the result that it may be regarded as having been carried out for that purpose” (para. 37).
As regards control over the goods, the Court concludes that direct control is not required; it suffices that the defendant has effective control over the goods. These are the relevant parts of the Judgment:
44 Despite the linguistic variations referred to in paragraph 42 above, it should be noted that, in the context of Article 10(3)(b) of Directive 2015/2436, each language expression, whether it refers unambiguously to possession or rather to the idea of storage or warehousing, implies having de facto power, and therefore a certain degree of control, over the goods concerned. In any event, as the Advocate General noted in point 54 of his Opinion, that provision forms part of provisions which are intended to provide the proprietor of a trade mark with a legal instrument enabling him or her to prohibit, and thus to bring to an end, any conduct of a third party using a sign in the circumstances set out in Article 10(2) of that directive. In that regard, any third party who has direct or indirect control over the act constituting that conduct must be regarded as being actually able to stop that use (see, to that effect, judgment of 2 April 2020, Coty Germany, C‑567/18, EU:C:2020:267, paragraphs 37 and 38 and the case-law cited).
45 It follows that the term ‘stocking’ in Article 10(3)(b) of Directive 2015/2436 covers not only cases in which the third party has direct and actual control over the goods concerned, but also those in which he or she has indirect but nonetheless actual control over those goods in that he or she has control or direction over the person who has direct and actual control over those goods.
46 If that provision were applicable only to a third party with direct and actual control over the goods concerned, it would be impossible for the trade mark proprietor to have an injunction issued against an economic operator which, without the proprietor’s consent, in order to offer or put those goods on the market, sends them to a service provider so that that operator can provide services such as the storage or transport of those goods for those purposes. Such an interpretation would, as the Advocate General noted in point 62 of his Opinion, be incompatible with the purpose of Directive 2015/2436 and would deprive the protection which it guarantees of part of its effectiveness.
Comments
The CJEU has established in a long line of cases that online sales from one country directed at customers in another country amount to an infringement of trademark rights existing in the country where the customers are addressed. These cases are referred to in the judgment of the Court. However, these cases were so far limited to acts directed at the customers in the country of destination, such as offering for sale or advertising goods. Preparatory acts, and notably the “stocking” for these purposes in a country other than that where the trademark is protected, had not been the subject of these earlier decisions, and under the principle of territoriality it could indeed be questioned to which extent the competence of a national infringement court could extend to acts committed outside of the territorial coverage of the trademark right. The “stocking” itself just as the making of goods in a country where no trademark protection exists clearly is beyond the reach of the national infringement court. It is only the “purpose”, namely the purpose for offering them in the country of protection, which makes them subject to the power of the infringement court. Once that “purpose” disappears, the goods would become non-infringing, and the mere “stocking” or “possession” of the goods in a third country does not infringe trademark rights existing in other countries.
Extending the notion of “stocking” or “possession” to situations of “indirect” control over the goods is a welcome clarification – infringers will not be able to shield or protect themselves against infringement actions by placing the goods under the direct control of third persons as long as they are the “masters” and can give directions over what is to be done with the goods.
Finally, it is perhaps interesting to note that the juge rapporteur in both cases reported here, as in many other recent trademark judgments of the CJEU, is Judge O. Spineanu-Matei, who seems to have taken over the role of Judge M. Ilešič who died about a year ago, on June 20, 2024.
