Difference in products renders FIRSTPRICE marks dissimilar

The Oslo District Court has dismissed the claims brought by Norgesgruppen, Norway's largest chain of grocery stores, against the optician chain C-Optikk's use and registration of the word and figurative mark FIRSTPRICE for goods in Classes 9 and 44 of the Nice Classification for eyewear and optician services (February 9 2007).

Norgesgruppen has held a registration for the word and figurative mark FIRSTPRICE since 2003 for goods in Classes 3, 16, 28, 29, 30 and 32 for sundry groceries and, among other things, perfume, cosmetics, sports accessories, office supplies and toys. It submitted to the Oslo District Court claims that (i) C-Optikk's use of the mark was infringing its own FIRSTPRICE mark, and (ii) C-Optikk's registration was invalid.

The court dismissed Norgesgruppen's claims. The court rejected Norgesgruppen's argument that it enjoyed a broad monopoly in the use of the mark FIRSTPRICE since it had invested considerable efforts and resources in order to establish its FIRSTPRICE mark since its launch in 2003.

Further, the court found that eyewear and optician services are distinctively different from the kinds of goods and services for which Norgesgruppen's trademark is registered and possibly established. It also held that the trademarks' designs were dissimilar. The court did not attach vital importance to the fact that the word element 'FirstPrice' is found in both marks. In this regard, the court stated that both marks should be considered to be weak, as they consist of words which are meant to describe a kind of pricing and are very general. The court did not consider the market surveys submitted by Norgesgruppen to constitute evidence that the marks were likely to be confused. Accordingly, the court concluded that C-Optikk had not infringed Norgesgruppen's mark under Section 6(2) of the Trademarks Act.

As to Norgesgruppen's allegations that its mark enjoys extended protection pursuant to the KODAK doctrine, the court stated that protection could not be extended to cover lines of business other than grocery goods and services. Norgesgruppen's mark, the court reasoned, is not so well known and established that it would imply an unreasonable exploitation of or be detrimental to its goodwill if C-Optikk was to use its FIRSTPRICE trademark. The court found for the defendant on all points and awarded it legal costs.

Felix Reimers, Advokatfirmaet Grette DA, Oslo