Claim No: IP-2022-000077 - [2024] EWHC 234 (IPEC)

This judgment relates to an application by the First Defendant to add new parties as counterclaim defendants in a trade mark and passing off dispute. The hearing was also the CMC.

The claim was issued on 23 September 2022. The Defence and Counterclaim was served on 14 November 2022. The claim was then stayed until 16 April 2023. The Claimant served its Reply and Defence to Counterclaim on 12 May 2023.

Wise Payments Limited (the ‘Claimant’) was incorporated in March 2010 under the laws of England and Wales and traded under the name TransferWise until 22 February 2021, when it began offering its goods and services under the name ‘Wise’. The formal change of name to Wise Payments Limited took effect on 25 June 2021. The Claimant’s business is the facilitation of the global transfer of money using technology which aims to make the process simpler, quicker and less expensive. It provides multicurrency prepaid accounts and debit cards to customers.

With Wise Limited (the ‘First Defendant’) offers logistics companies assistance in organising their work effectively. It provides onboarding software and related services to self-employed individuals and businesses that engage and/or contract with a self-employed workforce for the purposes of managing that relationship. Among other things, the First Defendant assists customers in managing payments to subcontractors. The First Defendant pleads that this aspect of its business does not involve technology to make payments automatically, nor does it involve effecting any transfer of money.

The Second Defendant is a director of the First Defendant and was a shareholder of the First Defendant from incorporation until 19 June 2020. The Third and Fourth Defendants have been directors of the First Defendant since 30 November 2021.

The details of the underlying dispute are not central to the issues to be determined today. The main allegations, including the relevant timelines, are briefly summarised below.

The Claimant alleges that the Defendants have infringed two of its trademarks:

It is alleged that the infringement arises: