Intellectual Property Enterprise Court

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

Fecha: 09-Feb-2024

Section 2

The Claimant also alleges passing off. It contends that between 2011 and 2021 it traded using the name ‘TransferWise’ and various logos. Since February 2021 it has traded using the name ‘Wise’. It pleads that it owns goodwill in its business associated with the name TransferWise. It also pleads that, owing to the way in which it used the name TransferWise and related logos before February 2021, a reputation is also attached to the word WISE.

10.

The Defendants deny both trade mark infringement and passing off.

11.

The Defendants contend that the Claimant’s marks which they are alleged to have infringed were invalidly registered and that by the time the Claimant rebranded to use the word ‘WISE’, the First Defendant had already accrued significant goodwill in respect of that word or sign.

12.

The First Defendant counterclaims for passing off on the basis that if there is any crossover between the marks and businesses the subject of the proceedings (which the Defendants deny), it is the Claimant’s rebrand and subsequent use of ‘WISE’ that amounts to infringement.

13.

The First Defendant issued an Application on 6 September 2023. It seeks to join four additional parties and to make various consequential amendments to its pleadings. The application is for the new parties to be joined only in respect of the Counterclaim for passing off in respect of the use by the Claimant of the name ‘Wise’.

14.

The potential additional parties are:

•

Wise plc (the proposed Third Party), a member of the same corporate group as the Claimant;

•

Mr Kristo Käärmann, who is the co-founder and current CEO of the Claimant, and has been a director of the Claimant since 31 March 2010 (the proposed Fourth Party);

•

Mr Taavet Hinrikus, who is the other co-founder of the Claimant, and was Chairman and a director between 8 November 2011 and 18 June 2021 (the proposed Fifth Party); and

•

Mr Dean Nash, who was General Counsel and Secretary of the Claimant between 15 October 2020 and 2 December 2021, and a director of the Claimant between 19 September 2021 and 2 December 2021 (the proposed Sixth Party).

15.

Wise Plc did not contest the Application to join it as a party to the Counterclaim and was joined by consent.

16.

The Claimant, Mr Käärmann, Mr Hinrikus and Mr Nash all resist the Application to join the remaining proposed additional parties. Mr Käärmann and Mr Hinrikus rely on IPEC case management and proportionality grounds. Mr Nash relies on those grounds and on additional substantive grounds relating to his role within the Claimant’s business.

17.

The outcome of the First Defendant’s application will affect the remainder of the CMC directions. Case management considerations, including the costs and benefits of particular procedural or interim steps, are an important aspect of proceedings throughout any IPEC case.