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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> SWIFTCALL (Trade Mark: Opposition) [2001] UKIntelP o19801 (26 April 2001) URL: http://www.bailii.org/uk/cases/UKIntelP/2001/o19801.html Cite as: [2001] UKIntelP o19801 |
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For the whole decision click here: o19801
Result
Sections 3(1)(b) & (c) - Opposition succeeded in whole or part, depending on whether applicants limited specification of services.
Sections 5(2)(b) - Opposition succeeded in whole or part, depending on whether applicants limited specification of services.
Section 5(4)(a) - Opposition succeeded in whole or part, depending on whether applicants limited specification of services.
Points Of Interest
Summary
The application in suit proceeded to publication on the basis of distinctiveness acquired through use and honest concurrent use of (a) telecommunication services and (b) interactive television services. However, in regard to opposition under Section 3(1), while the Hearing Officer took the view that the mark in suit was registrable for (b) he concluded that it was devoid of distinctive character for (a) in toto, and on the evidence it was not saved by the proviso to Section 3(1) except in respect of the provision of international telephone calls (which had generated revenue of £5m per year for four years prior to the relevant date). Opposition on that ground was therefore upheld, unless the specification in respect of (a) was limited to provision of international telephone calls.
Opposition under Section 5 was based mainly on the opponent’s registration and extensive use of the mark S.W.I.F.T (and device) in Class 38 (in respect of telecommunication services between financial institutions). The Hearing Officer also upheld opposition under both Section 5(2)(b) and 5(4)(a) on the basis of the application in suit as published, though he was again prepared to reverse his findings if the specification in respect of (a) was limited as indicated above. In reaching these findings, he concluded on the evidence that any claim under Section 7 to honest concurrent use (not pursued at the hearing) would have been without merit.
