SWIFT justice granted against SWIFTPAY site
The Brussels Court of Appeal has confirmed a first instance decision of the Commercial Court of Nivelles and has ordered the Irish company Swiftpay International Limited to cease all use of the signs SWIFT, SWIFTPAY and SWIFTPAY.COM, and delete its 'swiftpay.com' domain name (September 7 2006).
The Society for Worldwide Interbank Financial Telecommunication, better known as SWIFT, has used the SWIFT mark, trade name and company name since 1972 for, among other things, facilitation services for financial transaction activity throughout the world. Its Benelux registrations include, among others, a service mark registration dating from July 22 2004 for the word mark SWIFT.
In 2004 SWIFT noticed that Swiftpay International was using very similar signs in the Benelux, namely SWIFT, SWIFTPAY and SWIFTPAY.COM, in the framework of its internet activities, which focus on the facilitation of online payments.
The signs at issue were used as follows:
- The signs SWIFT and SWIFTPAY were used to distinguish Swiftpay International's services;
- The sign SWIFTPAY was used as part of its domain name 'swiftpay.com';
- The signs SWIFT, SWIFTPAY and SWIFTPAY.COM were used to distinguish an undertaking (ie, as a trade name); and
- The sign SWIFTPAY was also used as a component of its company name.
SWIFT challenged all these uses on the basis of its registered Benelux service mark.
The Commercial Court of Nivelles upheld SWIFT's claim and Swiftpay International appealed.
The Brussels Court of Appeal first dismissed Swiftpay International's claim that the SWIFT mark lacked distinctiveness and was therefore invalid. The court considered that the SWIFT service mark was, on the contrary, a highly distinctive and reputed mark as a result of its intensive and long-standing use.
The court reasoned that the services provided by the two parties under their conflicting signs were identical. However, it also noted that it could have disregarded possible differences between the services in view of the reputation of the SWIFT mark. Next, it found that the signs SWIFT and SWIFTPAY were similar to such an extent that the relevant public would establish a link between those two signs.
The court concluded that all the challenged uses of the signs SWIFT, SWIFTPAY, and SWIFTPAY.COM fell foul of the Benelux Trademark Act (now called the Benelux Intellectual Property Convention) as they took unfair advantage of the distinctive character and the repute of SWIFT's trademark. In this regard, the court mentioned that the reputation of SWIFT's services could transfer to Swiftpay International's services.
The court ordered Swift International to stop using the signs at issue and to delete its '.com' domain name under threat of a penalty. Additionally, it ordered the publication of part of its decision in certain Belgian newspapers and magazines.
Nicolas Clarembeaux, Altius, Belgium
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