[2025] EWHC 1722 (IPEC)

The likelihood of confusion must be appreciated globally, taking account of all relevant factors. I have already concluded that the Wise Logo Mark is similar to the Defendant's Signs to a medium-high degree and that certain of the goods and services in the Mark's specification are identical or similar to the goods and services of the First Defendant.

The Claimant claimed that when assessing the likelihood of confusion I should in addition take into account the enhanced reputation of the mark Wise. This was pleaded as arising from the way in which the TransferWise name and logos were used up to February 2021 and Mr Ballarini said that the existing “brand equity” in Wise was a factor when considering the change of name, although he also said that people would understand it quickly because of their familiarity withTransferWise. In my judgment, the documents do not support the claim that Wise solus had a reputation in 2019 when the Claimant started to plan the change of name, nor in February 2021 when the Claimant made the change. For instance, a confidential document from 2019 setting out the pros and cons of changing name referred to the brand equity in TransferWise, but did not refer to brand equity in Wise alone. On the contrary, that presentation and similar documents expressed real concerns about moving to Wise and contemplated moving to an entirely new name. In my view, this showed that the Claimant itself did not perceive Wise as having a reputation independent of the full name TransferWise. The Claimant also relied upon a confidential spreadsheet of the search terms leading people to its site between 2016 and 2021 when the name changed. None of these consisted simply of the word Wise, although a minority of searches used terms other than TransferWise which started with Wise, such as ‘Wise transfer’ or ‘wise bank.’ In my view, those results do not support the claim that Wise had its own reputation by February 2021 even if that were the relevant date for considering the point, which, for the reasons given above, it is not. They mainly show people using permutations of the TransferWise name, and the numbers of searches for ‘wise.com’ or ‘wise bank’ are too small in number to be significant. Overall, I consider that this is not a factor I should take into account in assessing the likelihood of confusion.

As I have said, both sides began experiencing instances of confusion from around June 2021, after the Claimant’s change of name, and the launch of the Defendants’ app. Mr Roberts KC said that all of the confusion which had occurred was in the “payment financial services space”. The Defendants contended that this confusion arose because of the Claimant’s rebrand from TransferWise to Wise, not because of changes made to their business or the launch of their app. I think that is probably correct, although as I have said, there was the added problem that both sides were offering a Wise app for download. Customers of the Claimant started to approach the First Defendant, whilst its own customers approached the Claimant. No such contact had been recorded before the Claimant’s rebrand.

The witnesses were cross-examined on a number of the documents recording these interactions (some call transcripts, some emails). I was invited by both sides to consider many more of those documents which were identified in their skeleton arguments. I have done so, and have listened to some recordings of the calls, but I have not found this evidence especially helpful in deciding whether there is a likelihood of confusion between the Wise Logo Mark and the Defendants’ Signs. In the great majority of cases, it is not possible to tell what caused the caller/customer to approach the ‘wrong’ party and it is certainly not possible to tell whether any caller was familiar with the Wise Logo Mark and confused any of the Defendants’ Signs with it.

Taking the fairly typical example annexed to the Amended Particulars of Claim, the customer approached the Claimant about a text message asking them to download an app, asking whether the message came from the Claimant. At first, the Claimant’s operator suggested that this was a scam, but later she explained that the app in question was the Defendants’ app. Plainly, there was confusion because both parties were using the Wise name for an app, but there is nothing in the exhibited exchanges which indicates that the customer was familiar with the Wise Logo Mark. In another example from November 2022, discussed with Mr Tuuling in cross-examination, a customer had lost his wallet and phone, and had called the Claimant for help. It seems likely that the caller was one of the Claimant’s customers, as the operative found his details on the Claimant’s system. Towards the end of the call, he referred to money owed to him from working for Amazon and asked the operator if payment could be expedited. He said “I think maybe they are not the same anyway but there is a company Wise, Wise also … I sent them an email.” When he gave the operator a withwise email address, they told him not to communicate with the Defendants as this seemed to be a scam. In my judgment, it is not clear that this person was confused at all. He was doubtful about whether the companies were connected, at the highest he wondered whether there was a connection between them, he did not assume one. Further, one cannot tell whether he drew a connection between the parties because of his pre-existing knowledge of the Wise Logo Mark or not. It is possible that it was simply because both parties were trading under the name Wise. A similar point can be made about someone who emailed the Claimant in October 2022 when having trouble using his app. It is unclear why he emailed the Claimant, as he had received an email from the First Defendant, but it seems possible that he had downloaded the Claimant’s app rather than the Defendants’. By contrast, someone called the Claimant in October 2023 asking for help with his app. He plainly had the Defendant’s app. He eventually said “I think I might be ringing the wrong company because my app is actually withwise.com. Are you Wise.com only?”

Another example related to someone who was a customer of the Claimant, who called the number on the back of his TransferWise bank card with a query, and seemed to think it had come to him via Securitax, a company which had offered accountancy services to the Defendants’ customers. He thought Securitax had “changed their name to Wise.” The caller plainly was confused, but again, there is no reason to think that his confusion arose because he made a connection between the Wise Logo Mark and the Defendants’ Signs. In one early example of an instance of alleged confusion recorded by the Defendants, in May 2021 a customer emailed Mr Richards of the First Defendant asking why a donation had not been credited to its account. Mr Richards quickly worked out that this was someone confusing them with the Claimant. Again, it is not possible to tell what caused this person to contact the Defendant rather than the Claimant. Similarly, in an example from November 2021, someone emailed asking how to deal with a transfer from a Belgian bank to a UK bank. Plainly he was a customer of the Claimant. But how he came to email the First Defendant is unknown, as the customer asked, “Do you have a UK contact telephone number?” There were many other examples recorded by both sides.

The fact that quite a large number of people contacted one side in this case instead of the other is evidence of confusion arising from the similarity in their names and identity of their trade names. It is hardly surprising. However, in the absence of more details, it is difficult to place too much reliance on any particular example of alleged confusion in deciding whether there is a likelihood of confusion between the stylised Wise Logo Mark and the Defendants’ Signs. Having carefully considered numerous alleged instances of confusion, I am not persuaded that the Claimant has identified any example of such confusion.

However, the absence of evidence of actual confusion is rarely decisive as to a likelihood of confusion, for this depends on the facts, and may in particular depend on whether evidence of confusion would have been likely to come to light. The longer the parties trade side by side without confusion is also relevant. In easyGroup v Nuclei [2023] EWCA Civ 1247, [2024] F.S.R. 9 Arnold LJ said,

“77.

As I discussed in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus. L.R. 1097; [2023] F.S.R. 18 at [39], with the agreement of Nugee LJ and Lord Burnett of Maldon CJ, absence of evidence of actual confusion is not necessarily fatal to a claim under section 10(2) / Article 9(2)(b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. In considering the weight to be attached to this factor, it is relevant to consider what opportunity there has been for confusion to occur and what opportunity there has been for any such confusion to have been detected.”

Here, side by side use can have started only in March 2021, and the proceedings were issued on 23 September 2022. As I have explained, plenty of confusion has been detected, but it is unclear how much of it may be relevant to the alleged infringement of the Wise Logo Mark.The Claimant cannot say that any confusion must have arisen because of a connection made between the Wise Logo Mark and the Defendants’ Signs, because, however much use there had been of the registered mark (an issue for the separate proceedings) it is plain from numerous documents that the Claimant often used the simple name Wise or Wise Payments.

However, whilst the alleged instances of confusion do not amount to clear or consistent evidence of infringement, in my judgment it cannot be said that the absence of such evidence shows that there is no likelihood of confusion between the Wise Logo Mark and the impugned Signs. The problem before me is that I do not find it possible to identify the cause or nature of any confusion from the documentary evidence before me. The Defendants may seek to say that the Wise Logo Mark is unused, or little used, or used in a materially different form, but I cannot reach a view on that point at this stage.

I conclude that in this case I should consider the position as if the Mark was unused but remained validly registered. The cohort of average consumers includes a large number of drivers who are average members of the public, as well as a smaller cohort of contractors. Whilst I do not consider that the alleged instances of confusion are reliably probative of confusion, some of them may be, and a number of the calls or emails certainly suggest that some of the Defendants’ customers may also be customers of the Claimant. I take into account the potential impact of imperfect recollection of the Wise Logo Mark, with its rather moderate stylisation, and that I have found a medium-high degree of similarity between the Wise Logo Mark and the Defendants’ Signs, especially the name Wise solus. There is use of the Defendants’ Signs in relation to goods/services which are identical or similar to the goods/services of the Wise Logo Mark. I also take into account the context of use, in particular when the Defendants’ Signs are used on their app, where they are likely to be seen on a small mobile phone screen, where distinctions from the Wise Logo Mark may be less apparent to the average consumer. As against those facts, there has been a fairly substantial period during which reliable evidence of confusion (between the Mark, if used, and the Signs) might have been expected to come to light. Balancing all of these factors, I have concluded that even without clear evidence of actual confusion, there is a likelihood of direct confusion between the Wise Logo Mark and the Signs when used in relation to the identical and similar goods/services which I have identified above.