Decision Nº O/019/20 from Intellectual Property Office - (Trade market), 14 January 2020
| Judge | Ms C Boucher |
| Date | 14 January 2020 |
| Registration Number | UK00003303962, UK00003320966 |
| Administrative Decision Number | O/019/20 |
| Court | Intellectual Property Office (United Kingdom) |
O/019/20
IN THE MATTER OF TRADE MARK APPLICATION NOS. 3303962
AND 3320966 BY
SWIFFPAY LIMITED
AND
IN THE MATTER OF THE OPPOSITIONS THERETO
UNDER NOS. 413337 AND 414049 BY
SOCIETY FOR WORLDWIDE INTERBANK FINANCIAL
TELECOMMUNICATION SCRL
Page 2 of 68
Background and pleadings
1. Swiffpay Limited (“the applicant”) applied to register SWIFFPAY and Swiffpay (“the
word marks”) as a series of two trade marks on 15 April 2018. The marks were
accepted and published in the Trade Marks Journal on 4 May 2018 in respect of goods
and services in Classes 9, 35, 36, 38 and 42. Full specifications can be found in Annex
A.
2. The application was opposed by Society for Worldwide Interbank Financial
Telecommunication SCRL (SWIFT) (“the opponent”) on 6 August 2018. The opposition
is based upon sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (“the
Act”) and concerns all the goods and services in the application.
3. With regards to its claim based upon section 5(2)(b), the opponent is relying upon
the following marks:
i) WE00001048048 (“the 048 mark”)
Priority date: 16 November 2009
Date of designation of the EU: 11 May 2010
Date protection granted in the EU: 21 July 2011
Registered for goods and services in Classes 9, 16, 35, 36, 38, 41 and 42,
detailed in Annex B.
Page 3 of 68
ii) EU003838381 (“the 381 mark”)
SWIFT
Filing date: 17 May 2004
Registration date: 16 October 2006
Registered for goods and services in Classes 9, 16, 35, 36, 37, 38, 41 and
42, detailed in Annex B.
iii) EU002168482 (“the 482 mark”)
SWIFTNet
Priority date: 20 December 2000
Filing date: 9 April 2001
Registration date: 26 February 2003
Registered for goods and services in Classes 9, 38 and 42, detailed in
Annex B.
4. The opponent claims that the marks are highly similar and that the goods and
services covered by the applicant’s specification are the same as, or highly similar to,
goods and services covered by the earlier marks, leading to a likelihood of confusion
on the part of the public. Therefore, registration of the contested series of marks should
be refused under section 5(2)(b) of the Act.
5. Additionally, or alternatively, the opponent claims that use of the applicant’s marks
for all the goods or services in the application would take unfair advantage of, and
cause detriment to, the reputation of the earlier 048 and 381 marks. It claims that
dilution of the distinctive character of the earlier marks will alter the perception of those
marks and have an impact on the economic behaviour of the relevant public. Therefore,
registration of the contested series of marks should be refused under section 5(3) of
the Act.
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