Leading optical company found to have registered trademark in bad faith

The District Court of Oslo has issued its decision in the trademark dispute between Optik Smart Eyes AB and Synoptik A/S, two major players in the Nordic optical market. The trademark in dispute was the Norwegian trademark SMART EYES (Registration No 249 381). Synoptik had registered this mark with the knowledge that Smart Eyes had launched this mark in Sweden. The court was of the opinion that the mark had been filed in bad faith under Section 16(b) of the Norwegian Trademark Act. The registration was therefore expunged from the Trademark Register.

Smart Eyes was established in Sweden in 2007 and is one of the fastest-growing optical chains in the Nordic region.

In 2008, more than one year after the launch of Smart Eyes in Sweden, Synoptik - part of the Grand Vision group of companies and one of the leading companies within the field of optical-related goods and services - filed trademark applications for SMART EYES in Norway and Denmark covering optical-related goods and services in Classes 5, 9, 35 and 44 of the Nice Classification. The validity of the registrations was disputed, but Synoptik refused to cancel the registrations voluntarily. Smart Eyes was therefore forced to initiate legal steps against Synoptik in order to invalidate the registrations in Norway and Denmark.  

The key question in the Norwegian case was whether the trademark had been filed in bad faith under Section 16(b) of the Trademark Act.

In this respect, Synoptik admitted that it was aware of its competitor's use of SMART EYES in Sweden at the date of filing of the contested application. However, Synoptik alleged that mere knowledge of such use was not sufficient to establish bad faith, according to the principle set forth in the case law of the Court of Justice of the European Union (eg, Lindt (Case C-529/07) and Malaysia Dairy (Case C-320/12)).  

With reference to these decisions, the court had thus to assess the intention of Synoptik at the date of filing. This is a subjective element which must be assessed based on the objective circumstances of the case. In this respect, the court emphasised the following:

• The general aim of Smart Eyes was to extend its activities in Sweden and expand into other countries.
• The relevant market was defined as the Nordic market. Synoptik was aware of the focus on this market in 2008 and, consequently, it was obvious that Smart Eyes might want to enter additional national markets in this region.
• Synoptik's explanation with regard to its intention at the time of filing was not supported by succeeding circumstances.
• The fact that Synoptik was using its registration to prevent Smart Eyes from entering the Norwegian market indicated that this was also its purpose in 2008.

Due to the above, and after an overall assessment, the court found that Synoptik had filed its application in bad faith under Section 16(b). The registration was thus found to be invalid, and Synoptik was ordered to pay the legal costs.

The Norwegian decision is now legally binding. In the Danish case, Synoptik resigned and its Danish registration was cancelled voluntarily.   

Siw Lyséll Dølvik and Felix Reimers, Grette DA, Oslo

Felix Reimers represented Smart Eyes in the Norwegian case. The Danish case was handled by Sture Rygaard of Plesner. The two lawsuits were coordinated by Erik Ficks of Roschier.