A recent decision of the Court of Justice of the European Union in Lunapark v Hardeco has sparked lively discussion regarding time limitations in European Union trademark law. The case, known as the “Dracula paradox,” demonstrated that even prolonged inaction by a trademark owner does not always deprive them of the right to seek cessation of infringement.

Background of the Dispute

The Finnish company Lunapark owned a registered trademark “DRACULA” for confectionery products. At the same time, another company had been using the same sign for many years without registration. When the trademark owner brought an infringement action before the court, the defendant argued that the claimant had waited too long to react to the use of the sign and had therefore lost the right to protection.

Position of the Court of Justice of the EU

The Court held that EU rules on “acquiescence” are fully harmonized by the Trademark Directive. Accordingly, Member States may not apply additional national principles that limit the rights of the trademark owner due to their inaction, if such grounds are not provided for under EU law.

In particular, the rule on acquiescence applies only in cases involving a conflict between two registered trademarks. Where the other party uses a sign without registration, the prolonged tolerance of the trademark owner does not, in itself, deprive them of the right to seek cessation of such use.

“The Dracula Paradox”

The authors describe this situation as the “Dracula paradox”: a sign may be used on the market for decades without objection, yet the owner of the registered trademark remains able, at any moment, to bring an infringement claim. This creates tension between legal certainty for businesses and the protection of the exclusive rights of the trademark owner.

Potential Implications

The decision may have significant practical implications for companies in the EU. On the one hand, it reinforces the importance of trademark registration as the primary source of rights. On the other hand, the absence of clear time limits for bringing claims may create a risk of strategic delay on the part of trademark owners.

It is expected that future cases before the Court of Justice of the European Union may further clarify the balance between harmonization of EU law and the possibility of applying national procedural time limits in trademark disputes.

Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.