Intellectual Property Enterprise Court

[2025] EWHC 1722 (IPEC)

Fecha: 11-Jul-2025

The Proceedings

The Proceedings

18.

These proceedings were issued on 23 September 2022. They were stayed for ADR, but unfortunately no settlement emerged. Instead, in January 2024, various amendments were made to the pleadings, including to add the Third to Fifth Parties to the claim. The Claimant claims that:

the Defendants have infringed the Wise Logo Mark by using the Defendants’ Signs in relation to goods and/or services which are identical or similar to those for which the Mark is registered, leading to a likelihood of confusion, contrary to section 10(2) of the Trade Marks Act 1994;

the Defendants have infringed the TRANSFERWISE Mark, again contrary to section 10(2) of the Act, as well as contrary to section 10(3), on the basis that the TRANSFERWISE Mark is a mark with a reputation, and use of the Defendants’ Signs, without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the Mark; and

use of the Defendants' Signs amounts to passing off.

19.

The Amended Particulars of Claim (not settled by counsel who appeared at the trial) did not identify which of the registered goods or services were said to be identical or similar to any of the Defendants’ goods or services. The relief claimed was equally non-specific, claiming an injunction against making, offering for sale etc goods and/or services by reference to WISE or any other name(s) confusingly similar thereto. As pleaded, therefore, the claim potentially covered all of the First Defendant’s business, including its central activity of supplying on-boarding services. However, the Amended Particulars of Claim made no specific complaint about the name With Wise or use of that name as a sign, and this formed no part of the case before me.

20.

The Claimant’s skeleton argument for the trial clarified the position in particular as to the range of goods/services about which the Claimant complains. The skeleton stated “no complaint is made about Ds’ logistics, driver-onboarding and driver documentation services per se.” It explained that it was the Claimant’s case that it was the Defendants’ expansion into financial services that had brought the parties into direct conflict, albeit the Defendants say that they had offered the invoicing etc. services complained of from the outset. The skeleton also identified, for the first time, goods and services offered by the First Defendant which were said to be identical to those within the Claimant's specifications, namely:

payment services and invoicing services, alleged to be identical to “financial affairs; monetary affairs relating to the transfer of funds and providing methods for payment, electronic money services”;

tax advisory services, alleged to be identical to “financial affairs, monetary affairs, information, consultancy and advice relating to the aforesaid”;

costs management and management of fines, alleged to be identical to “financial affairs; monetary affairs, including those relating to the transfer of funds”;

payroll services, alleged to be identical to “providing methods for payment”;

software, including a mobile app, which offers and supports the above services, alleged to be identical to “computer software and application software in connection with financial services and monetary services”.

In argument, Mr Roberts KC, for the Claimant, emphasised that if these are not identical goods/services, they are highly similar ones. However, the Defendants complained that several of the services complained of in the Claimant’s skeleton, such as tax advisory services and management of fines, had not been identified in the Amended Particulars of Claim.

21.

The Defendants deny infringement and passing off. They admit that TRANSFERWISE has a reputation in relation to money transfer services but deny that use of ‘TransferWise’ led to a reputation for ‘Wise’. They claim to be the senior user of the Wise name. They counterclaim against the Claimant that:

the Wise Logo Mark and the TRANSFERWISE Mark were applied for in bad faith and should be partially invalidated because their specifications include terms of inappropriate breadth;

the same bad faith objection applied to two additional trade marks that the Claimant applied for in October 2021, Nos. 3710262 and 3710268 (“the Recent Marks”). Both are for the word WISE and are registered for services in Class 36. The specifications are not identical but overlap. For instance, one includes banking services, whilst the other includes “financial transactions including effectuating the transfer of funds and banking services and facilitating transactions involving electronically stored monetary value.” See Annex B to this judgment;

further, the Recent Marks were invalidly registered in light of the First Defendant’s earlier unregistered rights in the name Wise; and

the Claimant has passed off its business as connected to the First Defendant’s business.

22.

A case managementconference was held before Ms Pat Treacy on 15 January 2024, and a lengthy List of Issues was annexed to her Order. In very brief terms the issues live before me were:

Claim:

Is there s 10(2) infringement of the Wise Logo Mark and/or TRANSFERWISE Mark?

Is there s 10(3) infringement of the TRANSFERWISE Mark?

Has the Claimant established passing off by the Defendants?

Counterclaim

Have the Defendants established passing off by the Claimant?

Were the Claimant’s marks applied for in bad faith? And if so, how should their specifications be amended?

Should the Recent Marks be invalidated by reason of the Defendant’s earlier rights?

Is the First Defendant disentitled from relying on its earlier rights, if its use of Wise was unlawful from its inception?