[2025] EWHC 1722 (IPEC)

As Mr Roberts KC put it, there are several parties to the case, but only two sides. On the Claimant’s side, there are the Claimant company and its directors and a holding company, Wise Plc, who were added as the Third to Fifth Parties and Defendants to the counterclaim. The Counterclaim alleged that Wise plc was trading under the Wise name or sign, but this was denied on the basis that it is just a holding company, and no positive case was run against it at trial. It is accepted that I should make no findings against it. On the Defendants’ side in addition to the First Defendant company, With Wise Limited, its directors are named as the Second to Fourth Defendants. It is common ground that should the Claimant or the First Defendant be liable, their respective named directors would also be liable. In this judgment, I tend to refer to the Claimant or the Defendants, rather than draw a distinction between individual parties on one side.

The Claimant company was incorporated in 2010 under the name Exchange Solutions Ltd. In August 2012, the Claimant changed its name to Transferwise Limited. Mr Fabrizio Ballarini is the Claimant’s “Head of Organic Acquisition.” His evidence (although he did not join the company until 2015) was that trade started under Transferwise in 2011, some months before the change of company name, although there do not seem to be any documents to support that earlier date. In any event, from 2011 or 2012 it traded under the name Transferwise. The manner in which the name was presented changed over time, sometimes as Transferwise, at others TransferWise and whilst in general in this judgment I refer to it as TransferWise, the Claimant itself did not do so consistently, for example the Amended Particulars of Claim also made reference to TRANSFERWISE. In particular, from about 2014, the Claimant used the name alongside a small logo which it describes as a flag, although I doubt whether many people would recognise it as such without prompting. Blue and white livery appears to have been used since about 2012.

At the outset, the Claimant offered a single product which was a peer-to-peer money transfer service with foreign currency conversion. The aim of the service was to provide a foreign exchange service which was more efficient and less expensive than that of a traditional bank. The services were accessed initially through the Claimant's website and, from 2013, through an app. Initially the only exchanges offered were from sterling to euros and vice versa, but the offering expanded over time to include many more currency options. In about 2016, the Claimant started to offer a wider range of financial services specifically aimed at businesses, with a business account that could be used for tasks like managing business expenses, integrating with business accounting software and also a facility to make mass or bulk payments. Mr Ballarini said that this had been used as a payroll solution since at least 2019. From about 2017, customers could hold accounts in multiple currencies. In January 2018 the Claimant launched a debit card, which from January 2021 could be a virtual card.

As the Claimant came to offer a range of services outside the field of money transfers, Mr Ballarini explained that he and his team began to look at a possible rebrand, to move away from the TransferWise name which suggested that the Claimant only offered money transfer services. He was unclear as to when that process started. The best he could do was rely on the fact that one of two UK trade mark applications made by the Claimant on 17 October 2018 featured the word Wise rather than Transferwise.

The applications filed on 17 October 2018 led in early 2019 to the registration of the two trade marks which the Claimant says the Defendants have infringed. They are:

Mr Ballarini and Mr Weeresinghe gave evidence about the decision to change the Claimant’s trading name from TransferWise to Wise. I discuss this below. For the moment, it is only necessary to mention that the Claimant bought the domain name wise.com in about February 2020, and announced the proposed name change in February 2021. Mr Weeresinghe joined the Claimant company in February 2021 which, he said, was in the middle of the renaming exercise. Both he and Mr Ballarini explained that a lot of effort was made to mitigate the risk of changing the company name. It is unfortunate that the Claimant’s searches for other businesses using the Wise name were made only at the outset of the rebranding process in 2019, and no further search was carried out between March 2020 and the Claimant’s rebrand in February/March 2021 which might have disclosed the existence of the First Defendant’s business.

Since March 2021 the Claimant has traded as Wise, and it changed its name to Wise Payments Ltd in June 2021. From around March 2021, visitors to the TransferWise domain were automatically redirected to wise.com. The website announced the change from TransferWise to Wise in a variety of ways, and used the following sign mainly in blue on white, but also in white on blue:

Mr Ballarini and Mr Weeresinghe explained that the content on the TransferWise site was transferred to the Wise site, and the name Wise substituted for TransferWise on existing webpages. That was done in such a way (using “find and replace”) that pre-existing references to TransferWise/Transferwise even in the body of articles, quotations or text were changed to Wise. Care must therefore be taken in relying on such documents, to be sure which of those names was used at the time. As Mr Guise said in his witness statement, whilst that may have been a reasonable thing to do in the course of a rebrand, it does risk creating an inaccurate impression of the historical position. As I understand the evidence, the Claimant made no use of Wise solus or of the Wise Logo Mark prior to the rebrand in early 2021.

The Claimant has a substantial business whose UK revenue grew between 2019 and 2022 from £51 million per annum to £124 million per annum. For instance, it handled transactions worth more than £1 billion per month in 2022. It pleaded that as of August 2020 its app had been installed by at least 1 million customers in the UK. As a result, and as a result of the promotion of its business (figures for which were given on a confidential basis), it claimed a substantial goodwill in relation to the name TRANSFERWISE when used in relation to services relating to the transfer of money. It also pleaded that the way in which the name had been used up to February 2021 meant that the reputation also attached to the word Wise.

In the meantime, in December 2019 the First Defendant was incorporated as Go Drive Trading Limited. In March 2020, a decision was taken to rebrand as Wise, and that was swiftly followed by the acquisition of the domain name withwise.com. The company changed its name to With Wise Limited on 30 March 2020. It adopted the slogan "We Improve Self Employment" picking up on the letters of the word Wise. It is also unfortunate that the due diligence carried out by the Defendants when choosing the Wise name did not include carrying out a trade mark search which might have revealed to them the Wise Logo Mark upon which the Claimant now relies.

The Defendants’ pleaded case was that the First Defendant provides an onboarding system for logistics companies, the major part of which comprises recruitment/onboarding technology and compliance tools. It pleaded that it helps customers to manage their subcontractor payments but does not provide a facility to make payments automatically, nor itself to effect any financial transfers.

Mr Simon Hills, who is the Second Defendant, and is the First Defendant’s CEO, explained that the company set out to provide innovative software solutions for the logistics industry, especially helping logistics companies to “onboard” delivery drivers. They started doing so through an existing cloud-based customer relationship management platform, but found it unsatisfactory, so they speedily developed their own system and software. As a result, Mr Hills said, its business grew rapidly and in November 2021 was boosted by a multi-million pound investment from a private equity company. In the Counterclaim, the First Defendant claims goodwill in the Defendants’ Signs. It pleads turnover under the Defendants’ Signs of £6,640,000 for the 17-month period to 31 May 2021 and a little under £10m for the year ended 31 May 2022. Mr Morris, the First Defendant’s Chief Financial Officer, said that turnover for June-December 2020 was some £2.5m, and he provided a graph showing turnover of £600,000-800,000 per month by about February-March 2021.

Mr Hills described the First Defendant’s core product as onboarding and offboarding software for logistics contractors who work with self-employed drivers. The website was launched in April or May 2020, and from April 2021 the First Defendant also offered a mobile app which I understand is aimed specifically at the drivers rather than the contractors. The First Defendant also has two products offered to the drivers: an invoicing product and an accountancy product. Mr Morris explained that the invoicing facility was to help self-employed drivers who needed to raise their own invoices. The First Defendant has used the name Wise either in plain text or in these mildly stylised forms (“the Defendants’ Signs”):

One of the difficulties with this case is the limited evidence of what goods or services were provided by the First Defendant and how its business developed after March 2020. The Defendants said that their website had always offered a facility to enable drivers to invoice contractors efficiently, and to enable payment or payroll by the contractors. Certainly, the website made reference to payroll services from about April 2020. Dealing with invoicing appears to be an important feature of the app now used by the drivers. In addition, as discussed below, there were references to payment on the Defendants’ website and promotional videos. Nevertheless, it was the Defendants’ case that their core business did not include managing or effecting payments, as the First Defendant lacks the necessary financial accreditation. What they say they offer is means for customers to manage or organise their subcontractor payments, although it has always been necessary for payment to be made separately through another provider. Contractors could open an account with a connected company, Modulr, and payments would be made via Modulr, or they could use another bank. From early 2022 it was possible to link to Modulr through a link in the form of an API. Mr Morris described this as a more efficient way of uploading data to a platform which would allow payment to be made automatically.

From about June 2021, both sides began to receive messages or calls from the other’s customers. Both claim that this reflected confusion, actionable by them. The Claimant says that this arose because the Defendants launched the Wise app for drivers, including services too close to those of the Claimant, and alleged that payment services were offered for the first time via the app. The Defendants say that the confusion arose from the Claimant’s change of trading name from TransferWise to Wise. Certainly, as the Claimant already had an app at that date, which would have been rebranded to Wise in March 2021, from April 2021 there would have been two different Wise apps available for download.

Numerous documents on each side recorded instances of alleged confusion, and there were also audio recordings of some phone calls, but no evidence was adduced from anyone said to have been confused, leaving the parties and the Court faced with trying to understand whether there was confusion, and, if so, of what kind and how it had arisen. The Claimant relied in the Amended Particulars of Claim upon an email received from one of its customers on 19 September 2021 who, it said, had been confused into believing that a text message sent by the First Defendant had emanated from the Claimant. Whether or not in response to that email exchange, in mid-October 2021, the Claimant commissioned enquiry agents to carry out an investigation into the activities of the First Defendant. This was followed by correspondence between the parties on a “without prejudice save as to costs” basis in November 2021.