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

The substantive case against Mr Nash

The evidence on which the First Defendant relies against Mr Nash was summarised by Mr Selmi in his skeleton as follows:

“Dean Nash 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. Mr Leung also explains that he was involved in the Claimant’s rebrand in February 2021 and provides supporting evidence from LinkedIn, an article on Law.com, a press release from PagoNxt (the company that he currently works at) and an article from the Legal 500.”

The draft pleaded case against Mr Nash, for which permission is sought is:

“The Sixth Party was General Counsel and secretary of the Claimant between 15 October 2020 and 2 December 2021, and a director and controlling mind of the Claimant between 19 September 2021 and 2 December 2021. The Sixth Party was also involved in the Claimant’s decision to commence trading under the WISE name and/or mark in February 2021.” and subsequently “... (b) The ... Sixth Part...[y] authorised and/or procured and/or together with the Claimant ... participated in a common design in relation to the acts of passing off complained of herein ...”

Mr Selmi submitted that the evidence relied on clearly implicated Mr Nash in the decision to rebrand. He noted that, while sufficient evidence must be provided to establish a sufficiently arguable case, the test is the usual summary judgment test rather than ‘tons of evidence’. He also submitted that the Court must assume that the Defendant’s/Counterclaimant’s pleaded facts are true while also considering the likely availability of any evidence that it is reasonable to expect at trial. Mr Selmi dismissed Mr Nash’s witness statement explaining his role at the First Claimant and the timing of his various roles there as wholly irrelevant. He noted that Mr Nash’s evidence was largely the evidence that he might be expected (somewhat expanded) to give for trial and submitted that it was not appropriate to have regard to it at this stage as that would unfairly shut out the First Defendant and prevent them from pleading their case.

Mr Selmi’s position was that the fact that Mr Nash was General Counsel and Secretary of the Claimant when the rebrand was being planned and implemented, together with a selection of materials from press releases, social media posts and articles describing Mr Nash’s involvement in the rebrand, were together sufficient evidential basis to implicate him for the purposes of the application. He accepted that further material might become available through witness evidence or disclosure in due course which could show that Mr Nash was not jointly liable.

Ms Berkeley submitted on behalf of Mr Nash that, even if the Court accepted each and all of the facts pleaded by the First Defendant as being true, they did not assist the First Defendant in establishing that Mr Nash was a controlling mind of the Claimant involved in the decision to rebrand or that he at any time procured the infringement or shared a common design that it should take place.

Ms Berkeley’s submission was that the draft amended Counterclaim and the evidence in support of the application to add Mr Nash as a party disclosed no reasonable grounds for bringing the proposed Counterclaim against him. She noted that the evidence on which the First Defendant relied amounted only to the inferences which might be drawn from the handful of press comments, articles or posts exhibited to the witness statement of Mr Leung and the following uncontested facts:

Ms Berkeley pointed out that the additional material relied on by the First Defendant (social media posts, press releases or articles) were published at around the time that Mr Nash left the Claimant’s employ and submitted that they were in the nature of the sort of material lawyers use to describe their roles, for example, the material referred (in LinkedIn) to his role in “helping TransferWise rebrand, rename and reconstitute as Wise PLC”;or (in law.com) as having “... led [the] rebrand from TransferWise to Wise.”;or (in a press release issued by Mr Nash’s new employer) “Dean Nash is coming from online money payment company Wise where he spent the last two years as General Counsel. During his tenure, his team helped to make the company publicly listed at the London Stock Exchange and rebranded from TransferWise to Wise.” In Ms Berkeley’s submission, none of the materials provided showed anything other than that Mr Nash had worked at the Claimant as General Counsel and had facilitated the rebrand in that role.

The only pleaded allegation that Mr Nash was a controlling mind of the Claimant relates to the period when he was a director. Ms Berkeley noted that this period was significantly after the name change had been decided upon and that decision had been acted on. She further submitted that the First Defendant had produced no evidence that Mr Nash had done anything other than carry out his functions as General Counsel. In her submission, while that in itself did not preclude Mr Nash from becoming a joint tortfeasor, it was far from sufficient to provide a factual basis for a pleading of joint tortfeasorship. She submitted that, at its highest, the evidence produced by the First Defendant went no further than showing that Mr Nash had facilitated decisions taken by others, which had been held by the Supreme Court in Sea Shepherd to be insufficient to establish joint tortfeasorship.

In Ms Berkeley’s submission, the inadequacy of the First Defendant’s evidence was sufficient to dismiss the application in respect of Mr Nash as, in the words of Popplewell LJ in Kawasaki, it did not establish “... a factual basis which meets the merits test; it is not sufficient simply to plead allegations which if true would establish a claim; there must be evidential material which establishes a sufficiently arguable case that the allegations are correct.” [18].

In addition to that primary position, Ms Berkeley also relied on Mr Nash’s direct evidence. Ms Berkeley submitted that this evidence was both relevant and admissible, given the nature of the test under CPR 24(2)(a), as explained by HHJ Hacon in Beheer at [37] and the need to dispose of proceedings efficiently.

Ms Berkeley noted that Mr Nash’s evidence was to the effect that that the decision to rebrand and restructure had been taken in advance of his appointment and that his primary role as General Counsel was to advise the company and support the business during its preparation for a listing on the London Stock Exchange although he (and his legal team) also became involved in advising on a range of issues. Mr Nash explains that he reported to the Chief Financial Officer and that his involvement in the rebrand was to provide necessary legal support and assistance to the company, rather than to formulate policy or to drive it through.

Mr Nash’s evidence addresses his appointment as Company Secretary and what that role entailed. He explains that his appointment was by way of maternity cover, that his duties were primarily administrative or related to corporate governance and formalities. Finally, Mr Nash’s evidence is that his role as a director was to ensure compliance with regulatory formalities as a listed entity. He confirmed that it had lasted only briefly.

In summary, Ms Berkeley submitted both: that the First Defendant’s evidence was insufficient to support an arguable case giving rise to reasonable prospects of success in establishing joint tortfeasance against Mr Nash; and that this position was made even clearer by Mr Nash’s evidence.

Finally, in respect of Mr Nash, Ms Berkeley reiterated that the costs benefit and case management objections to the inclusion of additional parties applied to him as to Mr Hinrikus and Mr Käärmann.

Mr Selmi’s written submissions in respect of Mr Nash were that his roles within the Claimant and the additional material referred to above ‘clearly implicate’ Mr Nash in the decision to rebrand. During the hearing, Mr Selmi further submitted that some aspects of Mr Nash’s employment might have involved him in advising his clients as to the risks involved in the proposed rebrand in a way which could move beyond mere facilitation, but that further evidence would be required to establish that. Mr Selmi accepted that an attempt to understand the scope and nature of such involvement might encounter difficulties owing to potential issues with legal professional privilege. While some aspects of Mr Nash’s work, or that of his team, might not be privileged, such as, for example, undertaking trade mark searches, it was accepted by Mr Selmi that evidence capable of establishing whether some aspects of what Mr Nash did in respect of the rebrand went beyond facilitation was likely to be affected by considerations of legal privilege, and establishing the actual ambit and impact of any privilege claimed was likely to be complex.