Trade Marks - Wise Payments Ltd v With Wise Ltd.

 

Jane Lambert

Intellectual Property Enterprise Court (Recorder Amanda Michaels) Wise Payments Ltd v With Wise Ltd and others [2025] EWHC 1722 (IPEC) (11 July 2025)

This was a claim for trade mark infringement and passing off, and a counterclaim for trade mark invalidation and passing off. The action and counterclaim were tried by Recorder Amanda Michaels between 14 and 16 May 2025. These proceedings were unusual in that the trial lasted more than 2 days and there were more than the average number of interim applications.  I discussed two of those applications in Practice - Wise Payments Ltd v With Wise Ltd. and others on 22 Feb 2024.  Recorder Michaels handed down her judgment on the claim and counterclaim in WISE Payments Ltd v With Wise Ltd and others [2025] EWHC 1722 (IPEC) on 11 July 2025.  She found for each of the parties on particular issues of the claim and counterclaim.

The Claimant

The Claimant was Wise Payments Ltd. ("WPL").  It had been incorporated as Exchange Solutions Ltd. in 2010 but changed its name to Transferwise Ltd. on 3 Aug 2012 and again to its present name on 25 June 2021.  It started out by offering peer-to-peer money transfer services, but later developed other financial services, prompting its changes of business name in 2012 and 2021.  WPL is the registered proprietor of trade mark number UK3346396 (an image of which appears above) for a range of goods and services in classes 9 and 36, with effect from 17 Oct 2018 and trade mark number UK3346401 for the word TRANSFERWISE, also for goods and services in classes 9 and 36 with effect from 17 Oct 2018.  In her judgment, the recorder referred to UK3346396 as "the Wise Logo Mark" and UK3346401 as "the TRANSFERWISE Mark".

The Defendants

The first defendant was With Wise Ltd ("WWL"), which had been incorporated as Go Drive Trading Limited on 24 Dec 2019 and changed to its present name on 30 March 2020.  It supplies onboarding and offboarding software to logistics contractors who work with self-employed drivers.  It also offers invoicing and accountancy products to such drivers who need to raise their own invoices.  WWL trades under the following signs:

       

Ms Michaels referred to those signs as "the Defendants' Signs" in her judgment.   The second, third and fourth defendants are directors of WWL.   

Third, Fourth and Fifth Parties

Wise Plc is the claimant's holding company.   Recorder Michaels made no findings against that company because it did not trade as such.   The fourth and fifth parties were WPL's founders and directors.    They had been added in the proceedings before Pat Treacy which I discussed in Practice - Wise Payments Ltd v With Wise Ltd. and others on 22 Feb 2024. 

The Claim

WPL issued proceedings against the defendants on 23 Sept 2022.   It alleged that WWL had infringed: 

• the Wise Logo Mark under s.10 (2) of the Trade Marks Act 1994 by using the Defendants’ Signs in relation to goods and/or services that were identical or similar to those for which the Wise Logo Mark was registered thereby leading to a likelihood of confusion;
• the TRANSFERWISE Mark under s.10 (2) of the Act by using the Defendants’ Signs in relation to goods and/or services that are identical or similar to those for which the TRANSFERWISE Mark is registered once again leading to a likelihood of confusion; and
• the TRANSFERWISE Mark under s.10 (3) of the Act on the basis that that mark had a reputation, and that the use of the Defendants’ Signs, without due cause, took unfair advantage of or was detrimental to the distinctive character or repute of the TRANSFERWISE Mark.

WPL also alleged that WWL's use of the Defendants' Signs amounted to passing off.

The Counterclaim

WWL claimed to be the first user of the WISE sign.   It counterclaimed for:

• the Wise Logo Mark and the TRANSFERWISE Mark to be declared invalid under s.47 (1) of the 1994 Act on the grounds that they had been registered in breach of s.3 (6) in that WPL had applied for their registration in bad faith  as their specifications included terms of inappropriate breadth;  
• WPL's other trade marks UK3710262 and UK3710268 (which the recorder called "the Recent Marks") to be declared invalid under s.47 (1) for the same reason;
• the Recent Marks to be declared invalidly registered under s.47 (2) (b) on the ground that WWL had an  earlier right to use the WISE sign; and
• passing off.

The Issues

At the case management conference which I mentioned in Practice - Wise Payments Ltd v With Wise Ltd. and others, Ms Treacy ordered the following issues to be tried:

"Claim:
1) Is there s 10 (2) infringement of the Wise Logo Mark and/or TRANSFERWISE Mark?
2) Is there s 10 (3) infringement of the TRANSFERWISE Mark?
3) Has the Claimant established passing off by the Defendants?

Counterclaim
4) Have the Defendants established passing off by the Claimant?
5) Were the Claimant’s marks applied for in bad faith? And if so, how should their specifications be amended?
6) Should the Recent Marks be invalidated by reason of the Defendant’s earlier rights?

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

Whether the Wise Logo Mark and the TRANSFERWISE Mark had been registered in Bad Faith

Ms Michaels decided to try the validity of the Wise Logo Mark and the TRANSFERWISE Mark first.  She reasoned that if any part of the specification of either mark was found to be invalid, the marks could have been infringed only in respect of the parts of those specifications that survived.  

The Applicable Law

S.47 (1) of the Trade Marks Act 1994 provides:

"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."

One of those provisions is s.3 (6):

"A trade mark shall not be registered if or to the extent that the application is made in bad faith."

The above provision has recently been considered by the Supreme Court in SkyKick UK Ltd and another v Sky Ltd and others [2024] UKSC 36, [2025] Bus LR 251.  In para [4] of Lord Kitchin's judgment (with which the other Supreme Court Justices agreed), his lordship identified the following potential abuse:

"[4] If ................. a person applies to register a mark without having made any use of it and without intending to use it in the course of trade in relation to the goods or services for which protection is sought, it may leave the trade mark system open to abuse. It may, for example, permit a person to apply to register a mark, not with the intention of using it to indicate the origin of any goods or services for which that person is responsible, but simply to block or undermine the otherwise innocent and unobjectionable activities of third parties."

The Supreme Court held that an application to register a mark can be challenged under s.3 (6) by an examiner or opponent if he or she suspects that the application was made in bad faith.   PAN 1/25: Required behaviour, and the impact on examination practice, following the Supreme Court’s judgment in SkyKick UK Ltd and another v Sky Ltd and others, which I discussed in Applying for Trade Marks in Bad Faith on 4 July 2025 in NIPC Branding, establishes a procedure for challenging applications on that ground.  Para 16 of the PAN states: 

"This notice focuses primarily on examination practice. However, opponents and cancellation applicants involved in proceedings before the IPO’s Tribunal should also take note of the guidance at paragraphs 11-13 above. Relying on broad specifications may lead to counterclaims on bad faith grounds. Claimants are reminded they should base their case only on the terms they are content to defend against a potential counterclaim on bad faith grounds."

Bad Faith Applications

Lord Kitchin identified two categories of bad faith applications,  one of which was as follows:

"[182]… the applicant for the contested registration must have adopted a strategy which meant that the purpose of the rules was not met. Secondly, the applicant must have intended to obtain an advantage from the rules by artificially creating the conditions laid down for securing the registration. Of particular importance here may be whether the application was made with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark."

Identifying Bad Faith

Lord Kitchin provided the following guidelines at para [240] of his judgment in SkyKick, which Recorder Michaels edited and inserted at para [39] of her judgment in Wise Payments, underlining the points that were most relevant to that case:

“(i) It is an absolute ground of invalidity of an EU trade mark that the application for that registered mark was made in bad faith …
(ii) The date for assessing whether an application to register an EU trade mark was made in bad faith is the date the application for registration was made …
(iii) Bad faith in this context is an autonomous concept of EU law which must be given a uniform interpretation in the European Union …
(iv) While, in accordance with its usual meaning in everyday language, the concept of bad faith presupposes the presence of a dishonest state of mind or intention, the concept must also be understood in the context of trade mark law, which involves the use of marks in the course of trade. Further, it must have regard to the objectives of the EU law of trade marks …
(v) Consequently, the objection will be made out where the proprietor made the application for registration, not with the aim of engaging fairly in competition but either (a) with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties; or (b) with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, and in particular the essential function of indicating origin (Koton, para 46; Sky CJEU, para 75).
(vi) The intention of the applicant is a subjective matter, but it must be capable of being established objectively by the competent administrative or judicial authorities having regard to the objective circumstances of the case (Hasbro, paras 39 and 40; Koton, para 47).
(vii) The burden of proving that an application for a registered mark was made in bad faith lies on the party making the allegation. But where the circumstances of the case may lead to a rebuttal of the presumption of good faith, it is for the proprietor of the mark to explain and provide a plausible explanation of the objectives and commercial logic pursued by the application for registration (Hasbro, paras 42 and 43).
(viii) Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all of the factors relevant to the particular case (Lindt, para 37).
(ix) The applicant for a trade mark is not required to indicate or to know precisely when the application is filed or examined, the use that will be made of it (Sky CJEU, para 76; Deutsches Patent-und Markenamt, para 22).
(x) Nevertheless, the registration by an applicant of a mark without any intention to use it in relation to the goods and services covered by the registration may constitute bad faith where there is no rationale for the application in the light of the aims referred to in Regulation 40/94 and Directive 89/104 (Sky CJEU, para 77).
(xi) Such bad faith may, however, be established only where there are objective, relevant and consistent indicia tending to show that, when the application was filed, the applicant for registration had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (Sky CJEU, para 77).
(xii) It follows that the bad faith of the applicant cannot be presumed on the basis of a mere finding that, at the time of filing the application, the applicant had no economic activity corresponding to the goods and services referred to in the application (Sky CJEU, para 78).
(xiii) When the absence of an intention to use the mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that constitutes making the application in bad faith only in so far as it relates to those goods or services (Sky CJEU, para 81).
(xiv) If, at the end of the day, the court concludes that, despite formal observance of the relevant rules and conditions for obtaining registration, the purpose of the rules has not been achieved, and that there was an intention to take advantage of the rules by creating artificially the conditions laid down for obtaining the registration, this may amount to an abuse sufficient to find that the application was made in bad faith (see, for example, Hasbro, para 72).
(xv) Directive 89/104 does not preclude a provision of national law under which an applicant for registration must state that the mark is being used in relation to the goods or services in relation to which it is sought to register the mark, or that the applicant has a bona fide intention that it should be used, provided that infringement of such an obligation cannot constitute a ground for invalidity. It may, however, constitute evidence for the purposes of establishing possible bad faith on the part of the applicant when the application was filed (Sky CJEU, paras 86 and 87).”

Challenging an Application

Lord Kitchin said at [235]:

“I recognise that an inference that an application to register a trade mark was made in bad faith may be displaced by an explanation of an appropriate commercial rationale for making it. In my opinion, however, a failure to provide any satisfactory explanation may reinforce the inference and provide further support for a finding of bad faith. …"

Responding to a Challenge

His lordship added at [252]:

"I recognise that such an applicant, when given an appropriate opportunity, may provide a reasonable explanation and justification for its actions and in that way answer and dispel any inference that it made the application in bad faith. If, however, it fails to do so, it is in my view open to the tribunal to find that the application was indeed made in bad faith in respect of those goods and services."

Re CNVRG

Daniel Alexander KC's observed at para [40] pf his decision in Re CNVRG, CNVRG.IO, CNVRG, Accessible Labs Ltd. v Rui Qu (Shanghai) Enterprise Management Consulting Co, Ltd and another BL O/0534/25 12 June 2025 that “the judgment of the Supreme Court in SkyKick indicates that the bar has been raised as to what may reasonably be expected of applicants for trade marks".  He summarized the law as it now stands at para [48] of his decision:

"Where there is evidence from which it is proper to infer that an application for registration has been made in bad faith (on the basis that it was not applied for to protect one or more of the legitimate functions of a trade mark) an applicant can reasonably be expected to provide a sufficiently coherent explanation for the application specifically in the UK including as to its scope. An applicant may be able to justify the application (including its scope) on the basis of credible evidence as to its purposes in making it, for example by reference to the width of the underlying business, actual or reasonably contemplated, which the trade mark is intended to protect. If no adequate or sufficiently credible explanation is provided or one which justifies the UK application, there may be a proper basis for a finding of bad faith in whole or in part."

Applying the Law

Recorder Michaels noted that the specifications of both the Wise Logo Mark and the TRANSFERWISE Mark included terms such as "computer software" and "financial affairs" that were broad and imprecise.  They could be challenged in the light of the Supreme Court's judgment.  However, she did not consider that terms such as "internet accounts" or "banking" could be criticized in the same way.

She directed herself at para [45] that the inclusion of imprecise terminology could not, without more, be said to show that the WPL's marks had been applied for in bad faith. Each application had to be shown to have been filed as an abuse of the trade mark system.  The question of whether WWL had raised an inference of bad faith had to be considered in all the circumstances, such as the nature of WLP's business and any reasonably foreseeable or natural expansion of that business, at the time that the applications were filed.

WPL's Class 36 Services

The services for which WPL had registered the Wise Logo Mark and TRANSFERWISE Mark in class 36 were as follows:

"Financial affairs; monetary affairs; monetary affairs including those relating to the transfer of funds and providing methods for payment including providing pre-paid methods of payment and monetary credit for others; banking; financial services including foreign currency trading, exchange, payments, conversions, accounts and transfers; electronic money transfers; electronic foreign currency payment processing; electronic money services; electronic money transfer of foreign currency; financial transactions; financial transactions including effectuating the transfer of funds and banking services and facilitating transactions involving electronically stored monetary value; financial services including internet accounts and banking; financial services including on-line cash accounts, banking and providing pre-paid methods of payments and monetary credit for others; checking and savings account services for foreign currency accounts; the provision of information, consultancy and advice relating to the aforesaid."

Although some of its services could have been specified more precisely, the learned recorder noted that WPL's business had grown quickly and diversified considerably over the years. It had started as a money transfer business but it developed a range of money transfer and banking-type services, including accounts for holding customer money and a payment card. Given the expansion of WPL's business, the recorder could not infer that there were further sub-categories of financial services in relation to which WPL had no intention of using its marks and that there was no realistic prospect of its ever doing so. With some hesitation, therefore, she concluded that the defendants had not raised a sufficient inference that the impugned parts of the Class 36 specifications had been filed in bad faith so as to transfer the burden of proof to WPL to justify its trade mark application strategy.

WPL's Class 9 Goods

Ms Michaels arrived at the opposite conclusion in respect of the goods in Class 9:

"Computer software; application software; computer hardware, apparatus and instruments relating to devices for payment, money, monetary transfers and banking; card readers; payment terminals, money dispensing and sorting devices; credit, debit, bank and monetary cards; encoded cards; smart cards; magnetic payment cards; computer software and application software relating to all of the aforesaid and the electronic transfers of funds; all the aforementioned goods in connection with financial services, monetary services, banking services, investment services, cryptocurrency services and travel insurance services."

She referred to Mercury Communications Ltd v Mercury Interactive (UK) Ltd. [1995] FSR 850, (1995) IP & T Digest 17, where Mr Justice Laddie dismissed a summary judgment application for trade mark infringement on the ground that there was a strong argument that the registration of a mark under the heading "computer software" was too wide. The judge added that it was undesirable to grant a statutory monopoly to an individual across the whole spectrum of computer software where the individual's business related only to a defined area of software.

While appreciating that software was an essential tool of WPL's business, its application to register a trade mark for software of every conceivable kind could not be justified. The software that WPL and its customers used enabled it to provide its money transfer and other services.  The design or marketing of software was not the focus of its business, still less that it was the sort of business which would have a reasonable expectation of marketing a range of software fulfilling such diverse functions as to justify an application for computer software of all kinds. If Sky, with its broad business model, was unable to justify such an application, it was clear that WPL could not do so.  There must have been many sub-categories of software in relation to which WPL never had any intention of using its marks, and there was no realistic prospect of its ever doing so.

The learned recorder held that in relation to the computer software and application software in class 9, the defendants had raised an inference that those parts of the specifications were not necessary for the protection of the Claimant’s business or future business. In those circumstances, the breadth of the Class 9 specifications raised a concern about WPL's good faith in applying for them, and as to the veracity of its declaration of an intent to use the marks for all such goods. The burden of proof, therefore, fell upon WPL to justify its trade mark application strategy. In the recorder's view, it completely failed to do that. It did not explain or seek to justify its filing strategy in 2018 and gave only limited evidence of the kinds of software which it had created and released.

Amending the Specification

In view of that finding, the recorder considered it right to amend the specifications of the Wise Logo Mark and the TRANSFERWISE Mark to a reasonable specification for the business including a penumbra of protection or range of goods/services into which WPL might, as at the date of application, reasonably have been expected to or intended to expand its business.  WWL argued that the impugned terms should be expunged from the specification.  WPL responded that the specification should be amended to cover the business actually carried out or likely to be carried out by that company.

Ms Michaels decided to amend class 9 of the Wise Logo Mark and the TRANSFERWISE Mark as follows:

"The Wise Logo Mark

Computer software; application software; Computer software and application software relating to financial services, monetary services, and banking services in connection with electronic money and currency transfer services, foreign currency exchange services, foreign currency payment processing services, financial management services, financial transfers and transactions, payment services, invoice services, managing tax services, mass payments services and payroll services; computer hardware, apparatus and instruments relating to devices for payment, money, monetary transfers and banking; card readers; payment terminals, money dispensing and sorting devices; credit, debit, bank and monetary cards; encoded cards; smart cards; magnetic payment cards; computer software and application software relating to all of the aforesaid and the electronic transfers of funds; all the aforementioned goods in connection with financial services, monetary services, and banking services.

The TRANSFERWISE Mark

Computer software and application software relating to financial services, monetary services, and banking services in connection with electronic money and currency transfer services, foreign currency exchange services, foreign currency payment processing services, financial management services, financial transfers and transactions, payment services, invoice services, managing tax services, mass payments services and payroll services; computer hardware, apparatus and instruments relating to devices for payment, money, monetary transfers and banking; card readers; payment terminals, money dispensing and sorting devices; credit, debit, bank and monetary cards; encoded cards; smart cards; magnetic payment cards; computer software and application software relating to all of the aforesaid and the electronic transfers of funds."

Infringement under S.10 (2)

S.10 (2) of the Trade Marks Act 1994 provides:

"A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a)    the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b)    the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."

The recorder referred to the principles for determining the likelihood of confusion that Lord Justice Arnold has set out at para [27] of his judgment in Match Group LLC and others v Muzmatch Ltd and another [2023] Bus LR 1097, [2023] 4 All ER 190, [2023] EWCA Civ 454, [2023] FSR 18, [2023] WLR(D) 199:

“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”

Ms Michaels reminded herself of para [87] of Lord Justice Kitchin's judgment in Specsavers International Healthcare Ltd  and others v Asda Stores Ltd [2012] ETMR 17, [2012] EWCA Civ 24, [2012] FSR 19:

"In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."

Referring to para [67] of Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd  [2008] 3 CMLR 14, [2008] RPC 33, [2008] ECR I-4231, [2008] EUECJ C-533/06, [2008] CEC 899, [2008] EUECJ C-533/6, [2008] ETMR 55, (2009) 32(1) IPD 32001, [2009] Bus LR 339, the recorder directed herself that the context in infringement proceedings under s.10 (2) (b) of the Act is “limited to the circumstances characterising [the allegedly infringing] use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion”   She also recalled para [29] of Lord Justice Arnold's judgment in Morley's (Fast Foods) Limited v Thurairasa Nanthakumar and others [2025] EWCA Civ 186

"As I explained in Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2024] EWCA Civ 814, [2024] FSR 32 at [51]-[58], 'context of use' is normally relied upon by defendants as negating a likelihood of confusion in cases where, absent whatever is relied on as constituting the relevant context, the identity or similarity of the mark and the sign and the similarity or identity of the respective goods or services would (in combination with factors such as the distinctive character of the mark) give rise to a likelihood of confusion. As I also explained, it is not clear how far this principle extends outside the special circumstances of comparative advertising.”

Comparison of the Wise Logo Mark with the Defendants' Signs

The recorder found a medium-high degree of similarity between the Wise Logo Mark and the Defendants’ Signs.   She accepted that the name Wise was the dominant feature of the Wise Logo Mark, especially as words generally speak louder than figurative elements.  On the other hand, the figurative element of the Wise Logo Mark could not be ignored. There was nothing like the figurative element in the Defendants' Signs.  Two of the Defendants’ Signs were stylized to a moderate degree, and their stylization was not similar to the mark. The signs were all visually similar to the Wise Logo Mark. The simple word "Wise" was visually similar to the mark to a medium degree, and the stylized Signs to a lesser degree. The Defendants' Signs and the Wise Logo Mark were aurally identical. Conceptually, both the signs and the mark carried the concept of wisdom, but the Defendants’ Signs lacked the modest impact that the flag element might have had upon the average consumer, regardless of whether or not he or she would have recognized the figurative element as a flag. Recorder Michaels found the Wise Logo Mark and the Defendants' Signs conceptually similar to a medium-high degree.

Comparison of Goods and Services

WPL alleged that WWL used the Defendant's Signs in relation to the following services and goods:

• payment services and invoicing services, including managing, organising and arranging payments and invoices;
• tax advisory services;
• costs management and management of fines;
• payroll services; and
• software, including an app which offers and supports the foregoing services.

There was a dispute between the parties as to the services that WWL advertised and those that it actually provided.  The recorder found at [72] that the company may have advertised payment services, but the services it actually supplied were narrower, amounting to payroll and included the generation, provision or submission of invoices.   In her judgment, payroll services were identical to “financial affairs" and similar to “monetary affairs … relating to the transfer of funds and providing methods for payment” and “financial services including … payments…” as the nature and providers of such services are the same or likely to overlap.

There was also a dispute as to whether WWL had actually supplied software. WWL argued that all it had done was to provide onboarding and other services accessed by the use of software. The recorder did not accept that distinction and found that WWL had provided software in the form of software as a service through its website and in a downloadable app for drivers which fell within Class 9. Allowing for her findings and the amendment of the Class 9 specification, Ms Michaels concluded that WWL had advertised and offered downloadable software which at the least provided the generation, provision or submission of invoices.   It was thus a subset of WPL's Class 9 goods, and therefore identical to them. 

Identifying the Average Consumer

As I noted above, the likelihood of confusion must be assessed from the perspective of the notional average consumer of the relevant goods and/or services, who is deemed to be "reasonably well informed and reasonably observant and circumspect."  The recorder recalled para [34] of Lord Justice Floyd's judgment in London Taxi Corpn Ltd v Frazer-Nash Research Ltd [2018] FSR 7, [2018] ETMR 7, [2017] EWCA Civ 1729 that the average consumer includes “any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods”.   WPL submitted that the average consumer would be any member of the public or a business that might use its service for effecting money transfers and other transactions.  WWL suggested carriers, main and sub-contractors, including drivers. The learned recorder noted that the parties were not in disagreement and that instances of alleged confusion showed that some people were customers of both WPL and WWL.

Likelihood of Confusion

Ms Michaels directed herself at para [80] that the likelihood of confusion must be appreciated globally, taking account of all relevant factors. She had already found the Wise Logo Mark to be similar to the Defendant's Signs to a medium-high degree, and that some of the goods and services in that mark's specification were identical or similar to WWL's goods and services.  She concluded at para [90] that there was a likelihood of direct confusion between the Wise Logo Mark and the Defendants' Signs when used in relation to the identical and/or similar goods or services that she had identified above.

Infringement of the TRANSFERWISE Mark

The learned recorder did not see any likelihood of confusion between the TRANSFERWISE Mark and the Defendants' Signs.   The mark and signs were just too different.  WPL did not identify any proper basis on which Ms Michaels might conclude that there was a likelihood of indirect confusion. The lack of any evidence of confusion between the parties while WPL was trading as TransferWise and the WWL as With Wise, in contrast to the position after WPL began to trade as Wise Payments Ltd., seemed to support that conclusion. She therefore rejected the claim to infringement of the TRANSFERWISE Mark pursuant to s.10 (2) of the Act.

Infringement of the TRANSFERWISE Mark under s.10 (3)

WPL claimed that WWL had infringed the TRANSFERWISE Mark under s.10 (3) of the Trade Marks Act 1994. That subsection provides:

"A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—
(a)    is identical with or similar to the trade mark, 
 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

Recalling para [38] of Lord Justice Arnold's judgment in Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5, [2025] F.S.R. 9, Recorder Michaels noted that it was common ground that a claimant has to prove the following:   

(i) the trade mark must have a reputation in the UK; 

(ii) there must be use of a sign by a third party within the UK; 

(iii) the use must be in the course of trade; 

(iv) it must be without the consent of the proprietor of the trade mark; 

(v) it must be of a sign which is identical or similar to the trade mark; 

(vi) it must be in relation to goods or services; 

(vii) it must give rise to a "link" between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, 

(a) unfair advantage being taken of the distinctive character or repute of the trade mark, 

(b) detriment to the distinctive character of the trade mark (referred to as "dilution") or 

(c) detriment to the repute of the trade mark (referred to as "tarnishment"); and 

(ix) it must be without due cause.

WPL alleged that the TRANSFERWISE Mark was a mark with reputation and that by use of the Defendants’ Signs WWL had taken unfair advantage of or caused detriment to the distinctive character or repute of that mark. WPL also alleged that there was a serious likelihood that consumers would purchase WWL's goods or services on the strength and reputation of the TRANSFERWISE Mark and so take unfair advantage of the mark. A reputation was claimed “in relation to services relating to the transfer of money, including payment of invoices and more generally, multicurrency prepaid accounts and debit cards, and software application [sic].”   

WWL admitted that the Mark has a reputation, but only in relation to services transferring money, nationally or internationally, from one bank account to another. Otherwise, all of the allegations in relation to the s.10 (3) claim were denied.

The recorder did not consider that WPL had proved that it had a reputation in relation to the payment of invoices or software, but she did find that it had proved a reputation in the TRANSFERWISE Mark for services relating to the transfer of money, multicurrency prepaid accounts and debit cards.

Next, she considered whether there was a link between the Defendants' Signs and the TRANSFERWISE Mark.  She referred to para [56] of Lord Justice Arnold's judgment in Muzmatch:

“It is sufficient for the use of the sign to give rise to a link in the mind of the average consumer that the sign would call the registered trade mark to mind even if the average consumer would not be likely to be confused as a result: see Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) EU: C:2008:655; [2009] RPC 15 at [60]. This must, like the question whether there is a likelihood of confusion, be appreciated globally taking into account all factors relevant to the circumstances of the case: see Intel at [41].” 

She did not consider that the use of the Defendants' Signs would call the TRANSFERWISE Mark to the mind of the average consumer for the same reasons that she rejected WPL's claim that use of the Defendants’ Signs would lead to a likelihood of confusion with the TRANSFERWISE Mark.  There was no evidence of actual confusion, and there was a considerable difference between the services for which the mark had a reputation and the goods and services that WWL supplied under its signs.

Finally, the recorder could find no evidence of detriment to the distinctive character of the TRANSFERWISE Mark or that WWL had taken unfair advantage of the reputation of that mark.

For all those reasons, the learned recorder rejected WPL's claim that WWL had infringed the TRANSFERWISE Mark under s.10 (3) of the Act.  

WPL's Passing off Claim

Recorder Michaels noted at [112] that WPL's claim for passing off was pleaded briefly and in rather general terms. It seemed to relate back to the claim of a reputation in the name "TRANSFERWISE" and in the name "WISE" as part of the name "TRANSFERWISE".  As the learned recorder had already found that there was no likelihood of confusion between the TRANSFERWISE Mark and the Defendants’ Signs, it followed that the use of the name "Wise" by WWL would not have amounted to a misrepresentation of a connection with TRANSFERWISE.

The recorder concluded at [114]:

"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."

She added in the next paragraph that WPL's passing off claim failed.

WWL's Passing off Counterclaim 

WWL had used the "Wise" name long before WPL's rebrand.  Recorder Michaels observed that WWL had acquired sufficient goodwill in the trade name "Wise" in relation to its onboarding, offboarding and logistics software to sustain an action for passing off by 2021 when WPL changed its name for the third time.  The parties' businesses were very different but the recorder detected some overlap.  She held at [132] that WWL's counterclaim for passing off succeeded in relation to the WPL's payroll services (including arranging for payroll payments) and invoice services.

WWL's Counterclaim for Invalidation of the Recent Marks

The above passing off counterclaim was an "earlier right" within the meaning of s.47 (2) (b).  The recorder said at [135] "In my judgment, the claim to invalidity should follow my findings as to passing off by the Claimant set out above and should reflect the terms of the relief which should flow from those findings." Neither side had addressed Ms Michaels as to the parts of the specifications of the Recent Marks which should be invalidated by reason of WWL's earlier rights. Unless the parties can agree on the terms to be excluded from the specifications of the Recent Marks in the light of her judgment, she will need further submissions before settling the form of order.

Comment

There is a lot in this judgment.  WWL achieved the amendment of the specifications of the Wise Logo Mark and the TRANSFERWISE Mark on the ground that those marks had been registered in bad faith.  Its counterclaim for passing off succeeded in relation to payroll and invoice services and will result in the amendment of the specification of the Recent Marks as the counterclaim was an "earlier right".  On the other hand, WPL won its claim for infringement of the Wise Logo Mark but not the TRANSFERWISE Mark or passing off.   This is the first judgment since the publication of PAN 1/25 to consider the effect of the Supreme Court's judgment in SkyKick.  Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or message me through my contact page.