[2025] EWHC 1722 (IPEC)

At trial, the Claimant clarified the goods/services provided under the Defendants’ Signs which it says infringe their rights. They are:

The Amended Particulars of Claim had identified the business about which complaint was made as “providing onboarding software and related services to self-employed individuals and businesses that engage and/or contract with a self-employed workforce, primarily drivers, for the purpose of managing that relationship.” Nevertheless, the Claimant explained in closing that it took no objection to the Defendants’ logistics services, driver onboarding/offboarding services or driver documentation services, and no objection to the provision of those services via a mobile app, as long as such goods/services did not include any of the five categories of goods/services listed above.

The Amended Particulars of Claim stated that, “The services provided by the Defendants through the Defendants’ Website and/or Defendants’ App are described by the Defendants as including, inter alia, “payment technology” and “payroll management”.” Screenshots of the relevant pages of the Defendants’ Website were annexed to the Amended Particulars of Claim. Those pages from 2022 referred to “Payment technology” and “Payroll management” adding “Mitigate self-billing via the Wise platform and take the stress out of payday.” Mr Weeresinghe exhibited pages from the Wayback Machine showing that the same or similar terminology had been used on the Defendants’ website since at least April 2020. In addition, the Amended Particulars of Claim referred to promotional videos, pages from which were exhibited to the pleading. Apparently, the videos were found by the Claimant’s inquiry agents in October 2021, although the copies annexed to the Amended Particulars of Claim are dated May 2022. One of these showed a "Make payments" button within the Defendants’ app, another was headed "New payment run" a third referred to "Missing payment details… You will not be able to use Wise to pay a driver without payment details” and a fourth to "Payment Summary."

The Defendants submitted that the pleading set the parameters of the case of infringement they had to meet, and objected that tax advisory services, costs management and management of fines formed no part of the Claimant’s pleaded case. Those terms do not appear in the body of the Particulars or the webpages annexed to them (one reference which I was given to Annex 12 did not appear to me to help). So far as I can tell, those services were first mentioned in the Claimant’s skeleton argument and whilst it was said that it had become apparent that these additional services were offered by the Defendants, the references given in the skeleton appeared to me only to show that the Defendants can offer to connect drivers to accountants for help with UTR registration, tax filing, and other financial tasks. That did not, in my judgment, show that the Defendants offered such services themselves. The Defendants naturally objected that they had not come to trial prepared to meet a claim that covered such services, and they were not addressed in their disclosure or evidence. In all the circumstances, it seems to me that it would be unfair to the Defendants and wrong in principle to treat tax advisory services, costs management or management of fines as part of the allegation of infringement.

The Defendants also objected that “payment services and invoicing services, including managing, organising and arranging payments and invoices, payroll services” is a wider range of services than the pleaded “payment technology” and “payroll management” services. Certainly, there is no direct reference to invoicing services in the Amended Particulars of Claim, and it seems to me that the Claimant added this to the list of services to which it takes objection in light of the Defendants’ evidence that it does not provide payment or general invoicing services, but provides facilities for invoices to be generated for drivers. I agree that “payment services” is wider than the pleaded term “payment technology.” However, I consider that “payroll management” is a broad term, which could encompass managing, organising and arranging payments and invoices, or providing payroll services. I consider that the appropriate comparison to the Claimant’s specification would be for payment technology and payroll management, including managing, organising and arranging payments and invoices, as well as payroll services.

The Defendants accepted that the Amended Particulars of Claim claimed infringement by provision of software, including an app, which offers and supports any of the services listed in categories (i), (ii) and (iv) above.

Before considering the parties' rival contentions as to the similarity of goods/services, it is necessary to consider whether the Defendants have used their Signs on or in relation to payment technology and payroll management, including managing, organising and arranging payments and invoices, payroll services or indeed the provision of the relevant software, as the Defendants contended that they had not used their Signs in relation to any such payment services or software.