[2025] EWHC 1722 (IPEC)

There was no dispute as to the nature of a claim for passing off. The classic trinity of elements of the action was summarised by Lord Oliver in Reckitt & Colman Products Ltd v Borden [1990] 1 WLR 491 (p 499D – H): goodwill, misrepresentation and damage. In Discount Outlet v Feel Good UK [2017] EWHC 1400 IPEC, [2017] ETMR 34, HHJ Melissa Clarke, sitting as a deputy Judge of the High Court, helpfully explained:

“55.

The elements necessary to reach a finding of passing off are the ‘classical trinity' of that tort as described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL), namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation. The burden is on the Claimants to satisfy me of all three limbs.

56.

In relation to deception, the court must assess whether "a substantial number" of the Claimants' customers or potential customers are deceived, but it is not necessary to show that all or even most of them are deceived (per Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501, [2013] FSR 21).

57.

The Defendant relies on The National Guild of Removers and Storers Limited v Bee Moved Limited, Nicholas Anthony Burns and Oliver Christopher Robert Sampson [2016] EWHC 3192 (IPEC) in which Douglas Campbell QC sitting as a deputy Judge of the High Court considered "… the difficulties of distinguishing between mere confusion, which is not enough to establish misrepresentation, and deception, which is" … . He concluded that: "The real distinction between the two lies in their causative effect, but is not a complete statement of the position… The more complete statement focuses on whether the conduct complained of is "really likely" to be damaging to the Claimant’s goodwill or divert trade from him. This emphasis on "really likely" echoes Lord Fraser in Advocaat [1980] RPC 31 at p 106 line 3. It is implicit in this test that if the conduct complained of is not "really likely" to be damaging then it will be mere confusion."”

The date for assessment of passing off is the date of commencement of the acts of which complaint is made or threatened, see Cadbury-Schweppes v Pub Squash Co [1981] 1 WLR 193, [1981] R.P.C. 429. The Claimant sought to persuade me that the right date was after it had effected its own rebrand to Wise. I reject that claim for the reasons discussed in paragraphs [53] ff. above.

The Claimant’s passing off claim is pleaded briefly and in rather general terms, but seems to relate back to the claim of a reputation in the name TRANSFERWISE and in the name Wise as part of the name TransferWise. For the same reasons that I consider there would be no likelihood of confusion between that Mark and the Defendants’ Signs, I conclude that use of the name Wise by the Defendants would not amount to a misrepresentation of a connection to TransferWise.

If the relevant date is April 2021 when the Defendant’s app was launched, rather than March 2020 when it started to trade, the Claimant’s difficulty is that it did not use the name Wise prior to its rebrand in March 2021 and I have already rejected the unsupported claim that a reputation was built up in Wise through use of TransferWise. Mr Ballarini explained how the rebrand was rolled out. It was announced on 22 February 2021 and customers were transferred to the new website from around 22 March 2021. At that date, for instance, the wise.com website stated, “We’ve changed our name to Wise.” Mr Ballarini said that people very quickly began to refer to the Claimant as “Wise” but in my judgment the Claimant has not proved that there was goodwill generated more or less instantaneously in the name Wise. It seems likely that it will have taken some time to re-educate customers. Certainly, in my view the Claimant did not provide sufficient evidence to prove that having made the substantive change only on 22 March, by April 2021 it had generated a significant or substantial goodwill in the Wise name.

In the circumstances, the claim to passing off based upon the Claimant’s Wise name must fail in relation to the goods/services offered by the Defendant before the Claimant’s rebrand in February/March 2021. The Defendants were the earlier users of the Wise name and when they adopted it the Claimant had no unregistered rights in the Wise name. At the date of its rebrand, the Defendants had been using Wise for around a year in relation to onboarding services and payroll services and its non-downloadable software and in my judgment, the Claimant could not have prevented the Defendants from making use of the Wise name for such services. Although the Defendant’s app was only launched shortly after the relevant date, it does not seem to me that the Claimant’s goodwill would have prevented use of Wise for those goods.

The Claimant’s passing off claim therefore fails.