[2025] EWHC 1722 (IPEC)

The Claimant claims that the Defendants’ activities have led to infringement of the TRANSFERWISE Mark in breach of both sub-sections 10(2) and (3) of the Act. Both sub-sections require there to be similarity between mark and sign. In my judgment, the Defendants’ Signs are considerably less similar to that Mark than to the Wise Logo Mark. The Claimant invited me to find that the Mark would be perceived as two words, of which the ‘wise’ element is the dominant and distinctive component. I do not accept that submission, which appears to me to seek artificially to dissect the Mark in a way which is inappropriate and would be unlikely to be done by the average consumer. Although ‘transfer’ may be a descriptive element of the Mark, there was no evidence to suggest that the average consumer would ignore the word altogether, especially as it is at the beginning of the Mark, even if the fact that the Mark is made up of two words was emphasised by its frequent presentation as ‘TransferWise.’

In my judgment, the inclusion of the word ‘transfer’ before ‘wise’ has a real impact on how the Marks/Signs would be perceived visually, aurally and conceptually. Visually, the Mark/Signs differ because of the inclusion of the word ‘transfer’ in the former and (to a lesser extent) the modest stylisation of two of the Defendants’ Signs. I find that there is a low level of visual similarity. Aurally, obviously the conjoined words ‘transfer’ and ‘wise’ will be pronounced in full in the Mark, and the first part of the Mark is likely to be given more emphasis than the last syllable. There is a very low level of aural similarity. The inclusion of the word ‘transfer’ in the Mark adds a conceptual element wholly lacking from the Defendants’ Signs, but I do not accept the Defendants’ submission that the Mark/Signs are conceptually dissonant, still less that there is sufficient conceptual difference to outweigh the visual and aural similarities. I find that there is still some level of conceptual similarity. Overall, in my judgment, the level of similarity between the TRANSFERWISE Mark and the Defendants’ Signs is low.

I have dealt with the similarity of the goods and services and the identity of the average consumer above. The only distinction is that the TRANSFERWISE Mark does not have precisely the same Class 9 specification as the Wise Logo Mark, by reason of the Claimant’s own amendment to the latter. I do not think that this affects the analysis of similarity of goods/services.

The Claimant suggested that some of the disclosure proved that there had been confusion between ‘TransferWise’ and the Defendants' Signs. For example, I was invited to find that the log of the call which I have described in paragraph [85] above showed such confusion. I do not think that it is possible to draw that conclusion, given that the caller explained that he called the Claimant because that was the number on the back of the bank card which he was trying to use. The Claimant also pointed to an email of November 2021 from one of its customers to the First Defendant. He said “I have been using TW for years (now Wise) but still managed to make a mistake when transferring money …” There is nothing in the email to show that the writer confused TransferWise with the Defendants’ Signs, nor indeed to explain how it was that he came to email the wrong company. That may of course have been simply because both were by that time trading as Wise. The third example given by the Claimant in closing was from February 2022, when someone at the First Defendant warned a colleague that sometimes drivers were downloading the wrong app because they were confused with another company/app named TransferWise. As by then the Claimant had traded as Wise for about a year, in my judgment this does not prove confusion between the TRANSFERWISE Mark and the Defendants’ Signs.

There is no alleged instance of confusion between the TRANSFERWISE Mark and the Defendants’ Signs prior to the Claimant’s rebrand to Wise alone, and indeed, that rebrand took place after the relevant date for assessment of infringement. However, as I have already said, the lack of evidence of confusion is not determinative of whether there is a likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking account of all relevant factors. Confusion may be direct or indirect, as discussed in Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA. Looking at all of the factors I have discussed, as well as the manner of use of the Defendants’ Signs, I do not consider it likely that the average consumer would directly confuse the TRANSFERWISE Mark with the Defendants’ Signs, even allowing for imperfect recollection. The Mark/Signs are just too different. Moreover, given my finding as to the lack of reputation in Wise alone, and the Claimant’s own concerns about rebranding to Wise discussed above, it does not seem to me that there is a likelihood of indirect confusion either, on any of the bases suggested in Liverpool Gin. The Claimant did not identify any proper basis on which I might conclude that there is a likelihood of indirect confusion.The lack of any evidence of confusion between the parties whilst the Claimant was trading as TransferWise and the First Defendant as Wise, in contrast to the position after the Claimant began to trade as Wise, seems to me to support that conclusion. I therefore reject the claim to infringement of the TRANSFERWISE Mark pursuant to sub-section 10(2).