CALLCARD - 222491

• Administrative Decision Number: 222491
• Date: 29 November 2004
• opponent: SWIFT CALL LONG DISTANCE LIMITED
• 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. 222491 and

in the matter of an Opposition thereto.

EIRCOM LIMITED Applicant

SWIFTCALL LONG DISTANCE LIMITED Opponent

The application

1. On 12 April, 1999, Bórd Telecom Éireann plc (now eircom Limited), an Irish

company of 114 St. Stephen’s Green West, Dublin 2, made application (No.

1999/01212) to register the word CALLCARD as a trade mark in Classes 9, 16

and 38 in respect of a specification of goods and services that was amended in the

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

Class 9: Encoded cards.

Class 16: Cards included in Class 16; printed matter; brochures; printed

publications and directories; paper and paper articles.

Class 38: Telecommunications services.

2. The Application was accepted for registration on the basis that the mark had

acquired distinctiveness through use and was advertised accordingly under No.

222491 in Journal No. 1941 on 1 May, 2002.

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

Act was filed on 31 July, 2002 by Swiftcall Long Distance Limited, an Irish

company of 294 Merrion Road, Dublin 4. The Applicant filed a counter-statement

on 8 November, 2002 and evidence was subsequently filed by the parties under

Rules 20 and 21, respectively, of the Trade Marks Rules, 1996.

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4. Acting for the Controller, I decided the opposition on 7 November, 2005. The

parties were notified on that date that I had decided to uphold the opposition and

to refuse the application for registration. I now state the grounds of my decision

and the materials used in arriving thereat.

Notice of Opposition

5. In its Notice of Opposition the Opponent states that it has operated in the

telecommunications industry in Ireland since 1996 and that it has made substantial

use of its trade mark CALLCARD in relation to goods and services including

those in respect of which the Applicant seeks registration. It then alleges that

registration of the mark propounded by the Applicant would be contrary to the

provisions of,

(i) Section 6 of the Act,

(ii) Section 8 of the Act (the provisions of subsections (1)(a), (1)(b), (1)(c),

(4)(a) and (4)(b) are cited),

(iii) Section 10 of the Act (the provisions of subsections (1)-(4) are cited),

(iv) Sections 37(2) and 42(3) of the Act, on the basis that the Applicant does

not use or intend to use the mark, and.

(v) Council Directive No. 89/104/EC to approximate the laws of the Member

States relating to trade marks.

Counter-Statement

6. In its Counter-Statement the Applicant denies all of the grounds of opposition

raised against the application including the Opponent’s claim to have a reputation

and goodwill in the mark CALLCARD acquired through use in Ireland.

The evidence

Rule 20

7. Evidence submitted by the Opponent under Rule 20 consisted of a Statutory

Declaration (and Exhibits BH1-BH11) dated 12 February, 2004 of Brian Hannon,

General Counsel of the Opponent. At paragraphs 4-6 of his Statutory Declaration,

Mr. Hannon reviews the legislative provisions regarding absolute grounds for

refusal of trade mark applications and, by reference to previous case law, offers