Decision Nº O/558/21 from Intellectual Property Office - (Trade market), 26 July 2021
| Judge | Mr M Williams |
| Registration Number | UK00003303962, UK00003320966 |
| Date | 26 July 2021 |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/558/21 |
O/558/21
TRADE MARKS ACT 1994
IN THE MATTERS OF
TRADE MARK APPLICATION NOS. 3303962 AND 3320966
BY SWIFFPAY LIMITED FOR
Swiffpay / SWIFFPAY
AND
/
FOR GOODS AND SERVICES IN CLASSES 9, 35, 36, 38 AND 42
AND
OPPOSITIONS THERETO UNDER NOS. 413337 AND 414049
BY SOCIETY FOR WORLDWIDE INTERBANK FINANCIAL
TELECOMMUNICATION SCRL
AND
IN THE MATTER OF UKIPO DECISION No. O/019/20
REMITTED BY APPOINTED PERSON DECISION No. O/542/20
Page 2 of 65
Context of this remitted decision
1. This decision is to determine opposition proceedings brought against two trade mark
applications made by Swiffpay Limited (“the Applicant”). The contested applications are
detailed below. The oppositions have been brought by Society for Worldwide Interbank
Financial Telecommunication SCRL (S.W.I.F.T.) (“the Opponent”), based on objections
under sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (“the Act”). The UK
IPO trade mark tribunal has previously issued a decision in this matter (made on the
papers, without a hearing), which was published under the British Library (BL) reference
number O/019/20. That decision was the subject of an appeal, which was heard by
Amanda Michaels QC sitting as the Appointed Person (“the AP”). The appeal decision
was published under BL number O/542/20. The AP upheld the Hearing Officer’s decision
on the ‘proof of use’ element of the oppositions,1 but remitted for reconsideration before
a different Hearing Officer each of the three grounds claimed.
Background and pleadings
2. The Applicant applied, on 15 April 2018, to register a series of two word marks - “Swiffpay”
and “SWIFFPAY” (“the Applicant’s Word Marks”).
3. The Applicant then applied on 27 June 2018 for a series of two stylised marks (“the
Applicant’s Stylised Marks”):
4. Both of the contested applications are in respect of the same goods and services
specified in Classes 9, 35, 36, 38 and 42, which are as follows:
Class 9 goods
Computer software; computer hardware; computer software, hardware and systems for
use in the provision of financial and investment services; computer software, hardware
and systems for electronic financial and investment trading; electronic and web-based
financial and investment trading systems, software and hardware; computer software,
hardware and systems for virtual and crypto currency trading; software, hardware and
systems enabling secure Internet access; software, hardware and systems for storage
1 §§13-17
Page 3 of 65
and transfer of data; telecommunications and communications software and systems;
telecommunications and communications software and systems for transmission of data
and funds; financial and investment management software and hardware;
telecommunications and communications software and systems for transmission of
virtual and crypto currencies; software and hardware for financial and investment
management in relation to virtual and crypto currencies; software and hardware
facilitating financial and investment transactions; telecommunications and
communications software and systems for transmission of monetary, currency, virtual
currency, crypto currency, commodities and funds transfers and payments; software and
hardware facilitating financial and investment transactions in relation to virtual and crypto
currencies.
Class 35 services
Professional business consultancy services; professional business consultancy services
provided to financial institutions; business management assistance; business
management assistance provided to financial institutions; business management
consultancy services; business management consultancy services provided to financial
institutions; business management and administration; business management and
administration of charitable organisations; management and administration on behalf of
charities; business information services; business mentoring; mentoring services for
business management; provision of business training and instruction; providing business
management start-up support for other businesses; providing business management and
support services for start-up businesses; business incubator services; business
accelerator services; maintaining and updating of computer databases; consultancy,
advisory and information services relating to all the aforesaid services.
Class 36 services
Financial services; monetary affairs; electronic exchange and money market
transactions; financial services enabling virtual currency and crypto currency transactions
and exchanges; facilitating electronic monetary, currency, virtual currency, crypto
currency, commodities and funds transfers and payments; currency management
services; virtual currency and crypto currency management services; providing financial
information via a secure global electronic communication network, including information
on exchange and money market transactions; providing financial information relating to
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