Wise Payments Limited v With Wise Limited & Ors

In trade mark infringement and passing-off proceedings, the court must assess the parties’ actual use, the relevant date, and the pleaded case with precision.

Broad trade mark specifications may constitute bad faith in relation to distinct sub-categories where the applicant had no intention, and no realistic prospect, of using the mark for them. An unexplained filing strategy may transfer the evidential burden to the proprietor.

Likelihood of confusion is assessed globally, but the sign must be considered in its context and the mark as a whole. Passing off requires goodwill, misrepresentation and likely damage. Damage is not confined to diverted sales and may include injury to goodwill or customer trust.

The claimant, a financial-services business formerly trading as TransferWise, sued the defendants for infringement of two registered marks and passing off. The defendants operated an onboarding and payroll-technology business under the name Wise and counterclaimed for passing off, bad faith invalidity and invalidity of two later WISE marks based on earlier unregistered rights.

The trial concerned liability only. The principal issues were the validity and scope of the claimant’s specifications, infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, passing off, and the effect of the defendants’ earlier goodwill.

1. Bad faith. The broad Class 36 terms, including financial affairs, monetary affairs and financial services, were not shown to have been filed in bad faith. The claimant’s expanding money-transfer and banking-type business provided a plausible commercial rationale. The broad Class 9 terms computer software and application software were different. They covered many distinct sub-categories for which the claimant had no intention, and no realistic prospect, of use. The claimant failed to explain its filing strategy. Those terms were therefore amended to a reasonable specification reflecting its business and reasonably foreseeable expansion.
2. Wise Logo Mark. The defendants’ signs had medium-high overall similarity to the Wise Logo Mark. The relevant goods and services included identical or similar payroll, invoice-generation and related software services. Although the evidence of actual confusion did not reliably identify confusion with the registered mark, the global assessment, imperfect recollection and the context of use, particularly on a small app screen, established a likelihood of direct confusion under section 10(2).
3. TRANSFERWISE Mark. The defendants’ signs had only low overall similarity to the TRANSFERWISE Mark. There was no likelihood of direct or indirect confusion. The section 10(2) claim failed.
4. Section 10(3). The TRANSFERWISE Mark had a reputation for money-transfer services, multicurrency prepaid accounts and debit cards, but not for invoice-payment services or software. The defendants’ signs would not call the mark to mind. There was no sufficient evidence of dilution, tarnishment or unfair advantage. The claim failed.
5. Passing off. The defendants had goodwill in Wise for onboarding and payroll-related services by February 2021. The claimant’s use of Wise for payroll and invoice services was liable to cause a substantial number of persons to believe in a trade connection. Damage could arise from disruption, injury to customer trust and reputational harm, including the claimant’s operators wrongly describing the defendants as fraudulent. The defendants’ passing-off counterclaim succeeded in that limited field. The claimant’s wider money-transfer business was not covered.
6. The claimant’s passing-off claim failed. The defendants’ earlier use preceded the claimant’s acquisition of goodwill in Wise. The Recent Marks were therefore invalid to the extent necessary to reflect the defendants’ earlier rights, with the precise amended specifications left for agreement or further submissions.