SWIFTCALL - 202022

Administrative Decision Number202022
Date22 February 2005
SectionTrade Marks Act, 1996 - 2003-2007
Decision in Hearing
IN THE MATTER OF an application for registration of Trade Mark No. 202022 and
in the matter of an Opposition thereto.
of 294, Merrion Road, Dublin 4, Ireland
- Applicant
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
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
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:

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