Wise Payments Limited (formerly Transferwise Limited) v With Wise Limited & Ors

In the Intellectual Property Enterprise Court, a post-case-management amendment will generally be allowed where it enables the real dispute to be tried, but the specialist case-management regime imposes a stricter threshold. To establish exceptional circumstances for adding material after the first case management conference, the applicant will ordinarily need to show that the case could not reasonably have been advanced earlier and that it may significantly affect the trial’s outcome. Promptness remains important. The court must also consider prejudice, the risk of overloading the trial, and the cost-benefit of introducing the issue. A possible alternative claim, or a remedy whose practical benefit is uncertain, may weigh against amendment.

The defendants sought permission under CPR 17.1(2)(b) to amend their defence and counterclaim in trade-mark infringement, passing-off and invalidity proceedings. They wished to add a claim that the claimant’s Rectangle Mark was liable to revocation for non-use under section 46(1)(a) of the Trade Marks Act 1994.

The mark’s five-year period had expired after the case management conference, but the defendants delayed raising the point for several months while settlement discussions and mediation continued. Disclosure and factual evidence had already been exchanged, and a heavily loaded three-day trial had been fixed. The central issue was whether the specialist case-management rules justified permitting the late amendment.

1. Application dismissed. The defendants were not permitted to amend their pleading to add the non-use revocation allegation.
2. Under CPR 17.1(2)(b), the proposed allegation had a real prospect of success, but that factor was not decisive. The court had to apply CPR 63.23(2), which provides that, save in exceptional circumstances, further material beyond that ordered at the first case management conference will not be permitted.
3. Following Marflow Engineering Limited v Casellie Limited [2818] EWHC 3169 (IPEC), the starting point was that the proposed amendment must not significantly prejudice the opposing party. Ordinarily, the applicant must also show that the amended case could not, with reasonable diligence, have been advanced at the conference and that it was likely to have a significant influence on the trial’s outcome. The court avoided prescribing an exhaustive checklist.
4. The defendants had a satisfactory explanation for not pleading non-use before the five-year period expired, but not for failing to raise it promptly afterwards. Settlement negotiations and mediation did not justify the seven-month delay.
5. The proposed issue could require extensive investigation into variant use, genuine use, whether such use constituted use of the registered mark, and the relevant goods and services. There was a very real risk that it would overburden the already scheduled three-day trial.
6. The cost-benefit analysis also favoured refusal. The defendants could bring a separate revocation claim, and the practical value of adding the issue to the existing trial was uncertain. Any later practical significance could potentially be addressed through an application concerning a stay of an injunction or other relief.