[2025] EWHC 1722 (IPEC)

The Claimant pleaded in the Reply to the Counterclaim that the Defendants were disentitled from protection from passing off since their use of the Wise name was at all times unlawful as amounting to passing of and/or infringement of the Claimant's registered trade marks. This point was not pursued at the trial, because Mr Roberts KC accepted that the law was against him on this point, at least at first instance. He was referring to Inter Lotto v Camelot, [2003] EWCA Civ 1132, [2004] RPC 9, and Mr Norris KC referred me to the decision of Bacon J in easyGroup v Nuclei [2022] EWHC 901 (Ch) considering the same issue at paragraphs [192]-[198]. As the Claimant did not seek to pursue this point at trial, I will only refer to paragraph [196] of Bacon J’s judgment where she said,

“At its highest, therefore, the principle … is quite limited in scope, addressing situations where there has been serious wrongdoing such as a misrepresentation that involves dishonesty. That does not support the proposition that any act of passing off, without more, is liable to prevent a trader from acquiring goodwill.”

In this case, the only allegations were of trade mark infringement and passing off and no allegation of serious wrongdoing was pleaded or put.

The final issue relates to the First Defendant’s claim to invalidate the two Recent Marks on the basis of its earlier rights in the Wise name. It was common ground that the relevant date for that assessment is not the date of filing of those Marks, but the earlier date of the inception of use by the Claimant. It was agreed that this should be taken as February 2021. That was some 11 months after the First Defendant adopted the Wise name, but was prior to the launch of the Defendants’ app.

The Claimant took another pleading point about this part of the Counterclaim, as the Defendants had said that the claimed invalidity would apply if there was a likelihood of confusion between the Wise Logo Mark and the name Wise solus. I do not really follow why that would be the case, but as I have found such a likelihood of confusion, it seems to me that the pleading point goes nowhere. In my judgment, the claim to invalidity should follow my findings as to passing off by the Claimant set out above and should reflect the terms of the relief which should flow from those findings.

The parties did not address me as to the parts of the specifications of the Recent Marks which should be invalidated by reason of the First Defendant’s earlier rights. If the parties cannot agree on what terms should be excluded from the specifications of the Marks in the light of this judgment, then that is a matter on which I will need to have further submissions before settling the form of Order.

This judgment will be handed down remotely. If the parties are unable to agree the appropriate form of order, a hearing will be listed through the usual channels to resolve the Order, and the time for appeal will, if necessary, be extended to run from the date of that hearing.