SWIFTCALL - 202022

• Administrative Decision Number: 202022
• Date: 22 February 2005
• opponent: SOCIETY FOR WORLDWIDE INTERBANK FINANCIAL TELE-COMMUNICATION, COOPERATIVE SOCIETY
• Section: Trade Marks Act, 1996 - 2003-2007

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TRADE MARKS ACT, 1996

Decision in Hearing

IN THE MATTER OF an application for registration of Trade Mark No. 202022 and

in the matter of an Opposition thereto.

SWIFTCALL LONG DISTANCE LIMITED

of 294, Merrion Road, Dublin 4, Ireland

- Applicant

SOCIETY FOR WORLDWIDE INTERBANK FINANCIAL

TELECOMMUNICATION, CO-OPERATIVE SOCIETY

of Avenue Adele 1, B-1310 La Hulpe, Belgium

- Opponent

The application

1. On 31 May, 1995, Swiftcall (Cyprus) Limited, a Cypriot company of P. Lordos

Centre, P.O. Box 3110, Vyronos Avenue, Limasol, Cyprus, predecessor in title of

the Applicant, made application (No. 95/3716) to register SWIFTCALL as a

Trade Mark in Class 38 in respect of a specification of services that was amended

in the course of the examination of the application to read as follows:

“Telecommunications services and interactive television services in

Class 38.”

2. The Trade Marks Act, 1963, which had effect at the time of the making of the

application for registration, did not provide for the registration of marks in respect

of services and the application was held in abeyance pending the introduction of

legislation that would permit of its acceptance. The Trade Marks Act, 1996 (“the

Act”) was subsequently passed into law by the Oireachtas and the relevant

provisions were commenced with effect from 1 July, 1996. By virtue of

paragraph 15(1) of the Third Schedule to the Act (Transitional Provisions), the

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application has effect as if it were made at commencement and as if the date of

filing were the date of commencement.

3. The application was then examined under the Act, accepted for registration and

advertised accordingly under No. 202022 in Journal No. 1834 on 25 March, 1998.

4. Notice of Opposition to the registration of the mark pursuant to Section 43 of the

Act was filed on 24 June, 1998 by Society for Worldwide Interbank Financial

Telecommunication, Co-operative Society of Avenue Adele 1, B-1310 La Hulpe,

Belgium. The Applicant filed a counter-statement on 8 October, 1998 and

evidence was, in due course, filed by the parties under Rules 20 and 21 of the

Trade Marks Rules, 1996.

5. The Opposition became the subject of a Hearing before me, acting for the

Controller, on 5 July, 2004. The parties were notified on 25 January, 2005 that I

had decided to dismiss the opposition and to allow the application to proceed to

registration. I now state the grounds of my decision and the materials used in

arriving thereat.

Notice of Opposition

6. In its Notice of Opposition the Opponent makes a number of statements and

claims, which I would summarise as follows:

(i) The Opponent is a well known provider of telecommunications services

and is the proprietor of the trade mark SWIFT, which it has used for may

years in almost all countries of the world including the Republic of Ireland

in connection with telecommunication services for financial institutions.

(ii) The trade mark SWIFT is entitled to protection under the Paris Convention

as a well known trade mark.

(iii) The Opponent is the proprietor of Registration No. 115516 dated 14 July,

1983 of the following trade mark, which is registered in respect of printed

matter, newspapers and periodicals in Class 16: