[2025] EWHC 1722 (IPEC)

The Claimant also claimed infringement pursuant to subsection 10(3). It pleaded that the TRANSFERWISE Mark is a Mark with reputation and that by use of the Defendants’ Signs the Defendants have taken unfair advantage of or caused detriment to the distinctive character or repute of the Mark. It alleged that there was a serious likelihood that consumers would purchase the Defendants' goods or services on the strength and reputation of the TRANSFERWISE Mark and so took unfair advantage of it. The reputation was claimed “in relation to services relating to the transfer of money, including payment of invoices and more generally, multicurrency prepaid accounts and debit cards, and software application [sic].” The Defendants admitted that the Mark has a reputation but only in relation to services transferring money, nationally or internationally, from one bank account to another. Otherwise, all of the allegations in relation to the 10(3) claim were denied.

The parties were agreed on the criteria necessary to prove such a claim. These were set out, for example, by Arnold LJ in Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5, [2025] F.S.R. 9. They are: (i) the trade mark must have a reputation in the UK; (ii) there must be use of a sign by a third party within the UK; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is identical or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a "link" between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) unfair advantage being taken of the distinctive character or repute of the trade mark, (b) detriment to the distinctive character of the trade mark (referred to as "dilution") or (c) detriment to the repute of the trade mark (referred to as "tarnishment"); and (ix) it must be without due cause.

The Claimant suggested that point (vii), the existence of a link, did not arise here because it was not specifically mentioned in the List of Issues appended to the CMC Order. I do not accept that the formulation of a List of Issues could or should preclude the Court from considering a point which is a condition of a finding of infringement, and which was live on the pleadings. Nor do I consider that the need to prove a link took the Claimant by surprise, as it dealt with the issue in its skeleton argument, as did the Defendants. The issues identified in the Defendants’ skeleton argument were:

It is not a high bar to prove a reputation for the purposes of section 10(3). All that is necessary is that a significant proportion of the relevant public know the mark in relation to the goods or services for which it is registered (or, in this case, for the sub-set of those goods/services for which a reputation is claimed). See, for instance, the analysis in Burgerista v Burgista Bros [2018] EWHC 35 (IPEC); [2018] ETMR 16. The size and scope of the mark’s reputation is relevant to the question of whether a link will be made in the mind of the average consumer giving rise to one of the three types of injury.

However, it is difficult to judge whether a significant proportion of the relevant public know a mark when the turnover figures are global and there is no evidence as to the Claimant’s market share in any of the services in which it claims a reputation. Moreover, the extent of the Claimant’s reputation in the TRANSFERWISE Mark must be considered as at the relevant date, which I have found primarily to be March 2020, or at the latest April 2021.

Mr Ballarini set out the history of the expansion of the Claimant’s business. Up to 2015 it seems to have been centred heavily on services of or related to the transfer of money from bank to bank, and then in 2016 it started to offer a business account which he said had, since at least 2019, been advertised as a good payroll solution, as mass or batch payments could be made through it. A debit card was launched in 2018. As I have said, it is not disputed that it has a reputation for services relating to the transfer of money. Whilst Mr Ballarini referred to the existence of the facility for making payment of invoices and said that service had been advertised from 2019 onwards, he gave no details about the scope of such advertising or the numbers of customers using that facility. The same problem arises in relation to the claim to reputation in relation to multicurrency prepaid accounts and debit cards. Mr Norris KC pointed out that Mr Weeresinghe’s evidence was that he was a long-standing customer of the Claimant, having dealt with it since 2013, long before he joined as an employee. Mr Weeresinghe said that he was familiar with the Claimant's business and knew it was good for sending money, but it was only when he joined the business in 2021 that he understood the "full feature set."

Doing the best I can, it does not seem to me that the Claimant has proved that it has a reputation in relation to payment of invoices, or software. The evidence is marginally better for multicurrency prepaid accounts and debit cards, and I bear in mind how closely those services would be linked to the Claimant’s apparently well-known services for money transfers, especially international money transfers. I conclude that the Claimant has proved a reputation in the TRANSFERWISE Mark for services relating to the transfer of money, multicurrency prepaid accounts and debit cards.

The next question is whether a link would be made between the TRANSFERWISE Mark and the Defendants’ Signs. The test was set out in Muzmatch (supra):

“56.

It is sufficient for the use of the sign to give rise to a link in the mind of the average consumer that the sign would call the registered trade mark to mind even if the average consumer would not be likely to be confused as a result: see Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) EU:C:2008:655; [2009] R.P.C. 15 at [60]. This must, like the question whether there is a likelihood of confusion, be appreciated globally taking into account all factors relevant to the circumstances of the case: see Intel at [41].”

For the same reasons that I have rejected the claim that use of the Defendants’ Signs would lead to a likelihood of confusion with the TRANSFERWISE Mark, I consider that the use of those Signs would not call the TRANSFERWISE Mark to the mind of the average consumer. An additional factor militating against a link being made is the difference between the Defendants’ goods/services and the services for which I have found the Mark to have a reputation. Again, the lack of any evidence of confusion between Mark and Signs prior to the relevant date(s) shows that no link would be made.

In case I am wrong about the lack of a link, I will consider whether use of the Defendants’ Signs may lead to the kinds of injury pleaded. I note, but do not need to set out in full, the CJEU decision in Intel Case C-252/07, [2008] ECR 1-8823, at paragraphs [29]-[32] and [62]-[78], and in particular:

“77.

It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the

economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.”

As to the claim to detriment to distinctive character, the Claimant appears to argue that damage will have arisen because of the importance of the TRANSFERWISE Mark to the rebrand to Wise. It suggests that confusion arising by reason of two companies trading under the name Wise, both having ‘Wise’ apps, will damage the reputation of the TRANSFERWISE Mark, and use of the Defendants’ Signs will weaken that Mark. I do not accept those arguments. The suggested forms of detriment seem to me to be fanciful and there is certainly no evidence to support this claim, as required following Intel. It may well be difficult to obtain such evidence, but at this stage, the claim to detriment appears to me to be wholly speculative. Nor is there any evidence to suggest tarnishment. The Claimant filed some evidence about phishing, but Mr Tuuling accepted that the Claimant’s initial concerns about phishing were misplaced.

The Claimant also alleges that the Defendants have taken unfair advantage of the reputation of the TRANSFERWISE Mark. It did not plead that they had any intention to take advantage, so that the only possible basis for a finding of unfair advantage would be that the objective effect of the Defendants’ acts is to take advantage of the Mark (see Jack Wills [2014] EWHC 11 (Ch); [2014] FSR 39 at [80].) I bear in mind that I have found that the Defendants do not offer transfer of money, multicurrency prepaid accounts and debit cards, nor do they offer a service of effecting payments, as opposed to facilitating the generation and payment of invoices by a third party. It is unclear, therefore, how the Defendants’ business could take advantage of the Claimant’s reputation when that reputation lies in services which the Defendants cannot offer and have not offered.

For all these reasons, I reject the claim of infringement of the TRANSFERWISE Mark pursuant to sub-section 10(3).