[2025] EWHC 1722 (IPEC)

There was a dispute between the parties as to the relevant date for assessing the First Defendant’s counterclaim for passing off. Applying the rule set out above, the Claimant said that the date when it commenced the acts of which complaint is made or threatened was 17 October 2018, which was the date when it filed the application to register the Wise Logo Mark, on the basis that the application was accompanied by the usual declaration of an intent to make use of the Mark. Alternatively, it was suggested that the relevant date was when the Claimant acquired the wise.com domain name in 2019. Mr Roberts KC was unable to point to any authority for the proposition that a mere application to register a mark or acquisition of a domain name suffices to fix the relevant date for a passing off claim. I do not consider that the potential availability of quia timet relief in cybersquatting cases is relevant to this question. In my judgment, neither act would count as commencement of the acts complained of, as they are no more than preparatory steps which might facilitate the commencement of a business activity at some later date, wholly contingent on a raft of other factors which may mean that no such business is ever started. In my judgment, the correct date for assessing this counterclaim is, as Mr Norris KC submitted, February 2021, when the Claimant announced to its customers its intention to rebrand to Wise.

The Defendants pleaded that it had acquired goodwill in its goods and services under the name Wise by February 2021, and that the Claimant has passed off its goods and services as those of the First Defendant. The Claimant pointed to paragraph 30 of the Amended Defence and Counterclaim which complained that use of the name Wise alone (without the flag device) amounted to passing off, suggesting that this meant that use of the name with the flag device was not said to be passing off. I do not think that can be right, as paragraph 30 referred to “the reasons pleaded below” and paragraph 52 of the Amended Defence and Counterclaim, which sets out the allegation of passing off, relates to use of “the sign Wise and/or names and/or marks deceptively similar thereto.” The Claimant also referred me to the wording of the relevant Issue in the List of Issues approved at the CMC, which reflected paragraph 30 of the Defence rather than paragraph 52, but I reject the suggestion that this constrains the scope of the decision I need to reach given the pleaded case. In any event, the point seems to me to be of no significance, as it is clear that the Claimant has frequently used just the name Wise, without the flag, for instance on the telephone and in emails and in the body of its documents.

The Claimant did not accept that the First Defendant has the goodwill necessary to sustain a passing off action. It relied on Boxing Brands v Sports Direct [2013] EWHC 2200 (Ch), [2013] E.T.M.R. 48 where Birss J (as he then was) found only a small, localised goodwill, adequate only to prevent direct and local competition. That does not seem to me to be the case here. I have described the rise of the Defendants’ business above. It had been trading for just under a year when the Claimant rebranded its business, but there are ample examples in the case-law of businesses having built up a goodwill in even shorter periods. I accept Mr Morris’s evidence as to the growth of the business since it started in March 2020, that it had generated a significant turnover in the 6 months to December 2020, and by February 2021 was turning over hundreds of thousands of pounds per month. Mr Morris said that the First Defendant spent relatively modest sums on advertising but explained that this was because of the nature of its business, with marketing efforts being put into reaching out to targeted potential logistics businesses, rather than more general, traditional advertisements. The Claimant, on the other hand, pointed to the very modest number of hits on the withwise website by the relevant date and complained that none of the press coverage produced by the Defendants pre-dated September 2021.

I have taken into account the Claimant’s comments about the growth of the First Defendant’s business, but it seems to me that the First Defendant had undoubtedly acquired goodwill in the Wise name in relation to its onboarding business by the relevant date. It had a body of customers and a significant turnover, easily sufficient to sustain a passing off action. In the circumstances, use of the Wise name by a third party amounting to a misrepresentation as to a trade connection to the First Defendant would have caused it damage so that it could have sustained a passing off action against it as at that date.

Neither side addressed me in any detail upon the question of whether the services offered by the Claimant are close enough to those of the First Defendant for use of the Wise name to amount to a misrepresentation that its services are those of or connected to those of the First Defendant. Following Harrods v Harrodian School [1996] RPC 697the presence or absence of a “common field of activity” may be relevant to the issues of misrepresentation and damage but is only a convenient starting point for analysis in particular cases. There need not be competition for the same customers.  On the other hand, the closer the nature of the businesses, the more likely it is that the public will assume there to be a connection. The extent of any similarity between them may also be relevant to the separate question of likelihood of damage.

The Claimant submitted that even if the First Defendant had been offering onboarding services by the relevant date, use of the name Wise for its money transfer services would not have amounted to a misrepresentation. Its position was, as I have said, to claim that the First Defendant had not offered any payment services/technology until after February 2021. However, I have found that the First Defendant’s business offering prior to February 2021 included the so-called payment technology services, all relating to steps preparatory to making a payment, such as calculating sums due to a driver. Even if those services were provided in a more sophisticated manner once the app was launched, such services were part of the First Defendant’s services by the relevant date.

In closing, Mr Norris KC said that the First Defendant would if successful seek an injunction in narrower terms than pleaded in the Counterclaim: to prevent the Claimant from passing off a money transfer business or service as that of the First Defendant or as connected to the First Defendant, by use of the name Wise or any name deceptively similar thereto. The question is whether the First Defendant could have objected to the Claimant’s use of Wise for its money transfer business – or parts of that business - as at February 2021. For the reasons discussed above, unfortunately I do not consider that most of the instances of alleged confusion or deception clearly indicate the source of the confusion. In some cases, it took longer to unravel the confusion than others, but the basis of most individual’s confusion, in terms of contacting the wrong party or connecting the two sides, is unclear. There was at least one clear example of someone wondering whether there was a connection, but wondering is not proof of actionable misrepresentation. See Phones 4u Ltd v Phone4u.co.uk. Internet Ltd [2007] RPC 5 at [16]-[19] where Jacob LJ referred back to the point in Reed and concluded,

“Clearly if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too—... A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant’s goodwill or divert trade from him. I emphasise the word “really.””

Mr Norris KC submitted that it was clear that confusion had only started to arise once the Claimant had rebranded as Wise. Certainly, I would be inclined to think (but cannot be sure) that in a substantial number of the examples of alleged confusion before the Court the customer had carried out an internet search for Wise and chosen the link to the wrong company, or they may have been confused by seeing two Wise apps (as the instances of confusion all occurred after both sides had launched their apps). Mr Tuuling accepted that once the Claimant had learned that the First Defendant was not phishing “it was just a naming conflict, that the customer happened to be our customer as well, hence they did not know which Wise was contacting them.” That is a fair comment, and as I have said there is at least one example of a customer of both parties wondering whether they were connected. Possibly the best example for the Defendants is the person who emailed the Claimant in October 2022, having received an email from the First Defendant inviting them to download “the Wise app” and who was having trouble using the app, presumably because he had downloaded the Claimant’s app by mistake. Whilst the Defendants’ app was only launched after the relevant date for assessment of passing off by the Claimant, this does reinforce my view that someone wanting to use payment technology services would be liable to be confused by the parties’ use of Wise.

Despite the lack of clear evidence of the causes or nature of the confusion which arose, this is a case in which at the relevant date the First Defendant had goodwill in the name Wise for payroll services, and from February or March 2021 the Claimant began to use the identical name, for services which included some payroll functions. The parties’ overall businesses are very different, but there is that area of overlap in the services they provide. In my judgment, as these parties are using an identical name, one providing payroll technology enabling invoices to be generated and submitted for payment, and the other effecting the payment of the invoice through mass payments, it is inevitable that relevant confusion will arise. In my judgment, the numerous occasions when one of the First Defendant’s customers contacted the Claimant by mistake, sometimes about onboarding, or about setting up their account, or using the app, whilst not clear as to the cause of the confusion, support the conclusion that the Claimant’s use of the Wise name amounted to a misrepresentation.

I conclude that use of the name Wise by the Claimant in relation to its own payroll services (including arranging for payroll payments) and invoice services would be liable to lead a substantial number of members of the public to believe that there was a connection in the course of trade between the ‘Wise’ offering those services and the First Defendant.

However, it does not seem to me that a fair description of the range of the Claimant’s services which might be thought to have a connection with the First Defendant is “a money transfer business or service.” That is too wide. It would, for instance include foreign exchange transactions, or international money transfers, which are very different to the First Defendant’s services, bearing in mind that these have been offered only in relation to the employment of drivers for logistics businesses.

That leaves the issue of whether such misrepresentation will have caused damage to the First Defendant; whether, as Jacob LJ put it, “what is said to be deception rather than mere confusion is really likely to be damaging to the claimant’s goodwill or divert trade from him”. The Claimant relied on some comments made by Mr Hills in cross-examination which it suggested showed that the First Defendant was not suffering any damage from any such confusion. Mr Hills was asked to comment on the Claimant’s case that significant numbers of customers are getting confused between the two Wise companies. He said “On our side, as I mentioned, my Lady, I cannot agree to that, no. … I am not agreeing that on our side of the fence we recognise much confusion, if I am honest with you. … I cannot think that it is a problem on our side…” However, he had not long before been asked about the impact of the alleged instance of confusion on the Defendants’ customer services team and had suggested that the Defendants had not had the same level of problems as the Claimant. I do not consider that he was dismissing the possibility of damage from the confusion arising amongst customers, but he was just saying that calls and emails from the Claimant’s customers were not disrupting the First Defendant’s business.

In most passing off cases, damage flows almost inevitably from the misrepresentation, as the parties are in competition with each other and trade may be diverted from one to the other. That is not this case, despite the overlap of services relating to invoices, and the First Defendant did not put its claim in that way. Mr Norris KC explained that its concern was not about diversion of trade but about the fact that long after this dispute arose and the Claimant had become aware of the Defendants and their business, its operatives had continued to tell callers/customers that contacts from the First Defendant were scams or phishing, and told them to delete the Defendants’ emails or app. In one telephone call from November 2023 a customer of the First Defendant called the Claimant about an onboarding issue, despite having received an email from a withwise email address. After some discussion, the Claimant’s operator said,

“It is a phishing e-mail. It means that it is like a scam e-mail, like someone sent it to you and if you click on any links in the e-mail they might get access to your bank account or your Wise account or things like that. So do not click on any links, do not respond to them, just delete it and then I will send you some instructions and you can make sure your account is secure…. It is for sure a scam. Please do not click on any links.”

Mr Norris KC relied on the judgment of Jacob LJ in Phones4U Ltd v Phone4u.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5, in which (with some omissions for brevity) he said,

In Phones4U, one issue in the appeal was whether the trial judge had wrongly characterised a large number of instances of deception as “mere confusion.” Jacob LJ dealt with this at [36] onwards. A “mass of emails” to the defendant had been disclosed from members of the public who knew of “Phones 4u,” (for instance by having bought from one of the shops or seen an advertisement) and were trying to contact them. It seems that rather as in this case, the reason for those persons approaching the defendant was unclear. Jacob LJ said,

Mr Tuuling had naturally accepted in cross-examination that a false allegation of scamming or phishing would be damaging to a business and it is plain that long after the Claimant knew that the First Defendant was running a legitimate business, its operators were telling customers that it was fraudulent, and either telling them to ignore its emails, or to delete them. Mr Norris KC submitted that this would cause damage to its customer trust and the First Defendant’s reputation, which could lead to a loss of clients. Certainly, it would cause disruption for drivers and, indirectly, for their employers. The Claimant did not seek to argue otherwise but relied on challenging the elements of goodwill and misrepresentation.

In all the circumstances, I find that the Defendants’ passing off claim succeeds in relation to the Claimant’s payroll services (including arranging for payroll payments) and invoice services.