Wise Payments Limited v With Wise Limited & Ors

This is my judgment following the trial of liability only in a trade mark and passing off claim. As the parties’ names suggest, the dispute relates to the use of the name WISE. Not only does the Claimant accuse the Defendants of trade mark infringement and passing off, which the Defendants dispute, but the Defendants claim that the Claimant and the parties connected to it are passing off their business as that of the First Defendant. The Defendants have counterclaimed, alleging, first, that the Claimant has passed off its goods and services for those of the First Defendant, secondly, that two trade marks relied on in the infringement claim, as well as two further WISE trade marks owned by the Claimant, are invalid, having been registered in bad faith. Thirdly, the Defendants allege that the Claimant’s two most recent marks were invalidly registered in light of its earlier unregistered rights.

As Mr Roberts KC put it, there are several parties to the case, but only two sides. On the Claimant’s side, there are the Claimant company and its directors and a holding company, Wise Plc, who were added as the Third to Fifth Parties and Defendants to the counterclaim. The Counterclaim alleged that Wise plc was trading under the Wise name or sign, but this was denied on the basis that it is just a holding company, and no positive case was run against it at trial. It is accepted that I should make no findings against it. On the Defendants’ side in addition to the First Defendant company, With Wise Limited, its directors are named as the Second to Fourth Defendants. It is common ground that should the Claimant or the First Defendant be liable, their respective named directors would also be liable. In this judgment, I tend to refer to the Claimant or the Defendants, rather than draw a distinction between individual parties on one side.

The Claimant company was incorporated in 2010 under the name Exchange Solutions Ltd. In August 2012, the Claimant changed its name to Transferwise Limited. Mr Fabrizio Ballarini is the Claimant’s “Head of Organic Acquisition.” His evidence (although he did not join the company until 2015) was that trade started under Transferwise in 2011, some months before the change of company name, although there do not seem to be any documents to support that earlier date. In any event, from 2011 or 2012 it traded under the name Transferwise. The manner in which the name was presented changed over time, sometimes as Transferwise, at others TransferWise and whilst in general in this judgment I refer to it as TransferWise, the Claimant itself did not do so consistently, for example the Amended Particulars of Claim also made reference to TRANSFERWISE. In particular, from about 2014, the Claimant used the name alongside a small logo which it describes as a flag, although I doubt whether many people would recognise it as such without prompting. Blue and white livery appears to have been used since about 2012.

At the outset, the Claimant offered a single product which was a peer-to-peer money transfer service with foreign currency conversion. The aim of the service was to provide a foreign exchange service which was more efficient and less expensive than that of a traditional bank. The services were accessed initially through the Claimant's website and, from 2013, through an app. Initially the only exchanges offered were from sterling to euros and vice versa, but the offering expanded over time to include many more currency options. In about 2016, the Claimant started to offer a wider range of financial services specifically aimed at businesses, with a business account that could be used for tasks like managing business expenses, integrating with business accounting software and also a facility to make mass or bulk payments. Mr Ballarini said that this had been used as a payroll solution since at least 2019. From about 2017, customers could hold accounts in multiple currencies. In January 2018 the Claimant launched a debit card, which from January 2021 could be a virtual card.

As the Claimant came to offer a range of services outside the field of money transfers, Mr Ballarini explained that he and his team began to look at a possible rebrand, to move away from the TransferWise name which suggested that the Claimant only offered money transfer services. He was unclear as to when that process started. The best he could do was rely on the fact that one of two UK trade mark applications made by the Claimant on 17 October 2018 featured the word Wise rather than Transferwise.

The applications filed on 17 October 2018 led in early 2019 to the registration of the two trade marks which the Claimant says the Defendants have infringed. They are:

Mr Ballarini and Mr Weeresinghe gave evidence about the decision to change the Claimant’s trading name from TransferWise to Wise. I discuss this below. For the moment, it is only necessary to mention that the Claimant bought the domain name wise.com in about February 2020, and announced the proposed name change in February 2021. Mr Weeresinghe joined the Claimant company in February 2021 which, he said, was in the middle of the renaming exercise. Both he and Mr Ballarini explained that a lot of effort was made to mitigate the risk of changing the company name. It is unfortunate that the Claimant’s searches for other businesses using the Wise name were made only at the outset of the rebranding process in 2019, and no further search was carried out between March 2020 and the Claimant’s rebrand in February/March 2021 which might have disclosed the existence of the First Defendant’s business.

Since March 2021 the Claimant has traded as Wise, and it changed its name to Wise Payments Ltd in June 2021. From around March 2021, visitors to the TransferWise domain were automatically redirected to wise.com. The website announced the change from TransferWise to Wise in a variety of ways, and used the following sign mainly in blue on white, but also in white on blue:

Mr Ballarini and Mr Weeresinghe explained that the content on the TransferWise site was transferred to the Wise site, and the name Wise substituted for TransferWise on existing webpages. That was done in such a way (using “find and replace”) that pre-existing references to TransferWise/Transferwise even in the body of articles, quotations or text were changed to Wise. Care must therefore be taken in relying on such documents, to be sure which of those names was used at the time. As Mr Guise said in his witness statement, whilst that may have been a reasonable thing to do in the course of a rebrand, it does risk creating an inaccurate impression of the historical position. As I understand the evidence, the Claimant made no use of Wise solus or of the Wise Logo Mark prior to the rebrand in early 2021.

The Claimant has a substantial business whose UK revenue grew between 2019 and 2022 from £51 million per annum to £124 million per annum. For instance, it handled transactions worth more than £1 billion per month in 2022. It pleaded that as of August 2020 its app had been installed by at least 1 million customers in the UK. As a result, and as a result of the promotion of its business (figures for which were given on a confidential basis), it claimed a substantial goodwill in relation to the name TRANSFERWISE when used in relation to services relating to the transfer of money. It also pleaded that the way in which the name had been used up to February 2021 meant that the reputation also attached to the word Wise.

In the meantime, in December 2019 the First Defendant was incorporated as Go Drive Trading Limited. In March 2020, a decision was taken to rebrand as Wise, and that was swiftly followed by the acquisition of the domain name withwise.com. The company changed its name to With Wise Limited on 30 March 2020. It adopted the slogan "We Improve Self Employment" picking up on the letters of the word Wise. It is also unfortunate that the due diligence carried out by the Defendants when choosing the Wise name did not include carrying out a trade mark search which might have revealed to them the Wise Logo Mark upon which the Claimant now relies.

The Defendants’ pleaded case was that the First Defendant provides an onboarding system for logistics companies, the major part of which comprises recruitment/onboarding technology and compliance tools. It pleaded that it helps customers to manage their subcontractor payments but does not provide a facility to make payments automatically, nor itself to effect any financial transfers.

Mr Simon Hills, who is the Second Defendant, and is the First Defendant’s CEO, explained that the company set out to provide innovative software solutions for the logistics industry, especially helping logistics companies to “onboard” delivery drivers. They started doing so through an existing cloud-based customer relationship management platform, but found it unsatisfactory, so they speedily developed their own system and software. As a result, Mr Hills said, its business grew rapidly and in November 2021 was boosted by a multi-million pound investment from a private equity company. In the Counterclaim, the First Defendant claims goodwill in the Defendants’ Signs. It pleads turnover under the Defendants’ Signs of £6,640,000 for the 17-month period to 31 May 2021 and a little under £10m for the year ended 31 May 2022. Mr Morris, the First Defendant’s Chief Financial Officer, said that turnover for June-December 2020 was some £2.5m, and he provided a graph showing turnover of £600,000-800,000 per month by about February-March 2021.

Mr Hills described the First Defendant’s core product as onboarding and offboarding software for logistics contractors who work with self-employed drivers. The website was launched in April or May 2020, and from April 2021 the First Defendant also offered a mobile app which I understand is aimed specifically at the drivers rather than the contractors. The First Defendant also has two products offered to the drivers: an invoicing product and an accountancy product. Mr Morris explained that the invoicing facility was to help self-employed drivers who needed to raise their own invoices. The First Defendant has used the name Wise either in plain text or in these mildly stylised forms (“the Defendants’ Signs”):

One of the difficulties with this case is the limited evidence of what goods or services were provided by the First Defendant and how its business developed after March 2020. The Defendants said that their website had always offered a facility to enable drivers to invoice contractors efficiently, and to enable payment or payroll by the contractors. Certainly, the website made reference to payroll services from about April 2020. Dealing with invoicing appears to be an important feature of the app now used by the drivers. In addition, as discussed below, there were references to payment on the Defendants’ website and promotional videos. Nevertheless, it was the Defendants’ case that their core business did not include managing or effecting payments, as the First Defendant lacks the necessary financial accreditation. What they say they offer is means for customers to manage or organise their subcontractor payments, although it has always been necessary for payment to be made separately through another provider. Contractors could open an account with a connected company, Modulr, and payments would be made via Modulr, or they could use another bank. From early 2022 it was possible to link to Modulr through a link in the form of an API. Mr Morris described this as a more efficient way of uploading data to a platform which would allow payment to be made automatically.

From about June 2021, both sides began to receive messages or calls from the other’s customers. Both claim that this reflected confusion, actionable by them. The Claimant says that this arose because the Defendants launched the Wise app for drivers, including services too close to those of the Claimant, and alleged that payment services were offered for the first time via the app. The Defendants say that the confusion arose from the Claimant’s change of trading name from TransferWise to Wise. Certainly, as the Claimant already had an app at that date, which would have been rebranded to Wise in March 2021, from April 2021 there would have been two different Wise apps available for download.

Numerous documents on each side recorded instances of alleged confusion, and there were also audio recordings of some phone calls, but no evidence was adduced from anyone said to have been confused, leaving the parties and the Court faced with trying to understand whether there was confusion, and, if so, of what kind and how it had arisen. The Claimant relied in the Amended Particulars of Claim upon an email received from one of its customers on 19 September 2021 who, it said, had been confused into believing that a text message sent by the First Defendant had emanated from the Claimant. Whether or not in response to that email exchange, in mid-October 2021, the Claimant commissioned enquiry agents to carry out an investigation into the activities of the First Defendant. This was followed by correspondence between the parties on a “without prejudice save as to costs” basis in November 2021.

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 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.

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:

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:

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:

The Defendants applied in November 2024, after disclosure, to re-amend the Defence and Counterclaim, to add a further counterclaim for revocation of the Wise Logo Mark for non-use. That mark had been registered on 1 March 2019, so the claim for revocation could not have been made until March 2024, after the CMC, but could have been made earlier than in November. HHJ Hacon rejected the application to amend for the reasons given in his judgment of 13 December 2024 ([2024] EWHC 3448(IPEC)). I understand that the Defendants have instead issued separate proceedings for revocation for non-use under claim No. IP-2024-000138. Those proceedings remain at an early stage. The Claimant in these proceedings applied, prior to filing a Defence, to strike out the second proceedings as an abuse of process. Its application is due to be heard later this month. There were, therefore, no issues of revocation before me in this trial and nothing in this judgment is intended to pre-empt the substance of the revocation claim, bearing in mind that the Claimant’s disclosure and evidence did not deal directly with the scope of use of the Wise Logo Mark.

On 3 February 2025, following the service of evidence in reply, the Claimant’s solicitors informed the Defendants’ solicitors that there were 23 extra documents (“the Application Documents”) which they described as ‘disclosure documents’ and which they intended to include in the trial bundle. These were documents relating to the Defendants’ business, directors and connected companies, seemingly sourced from the internet. By the CMC Order, the Claimant had been ordered to give disclosure in relation to two points from the List of Issues, namely evidence of instances of actual confusion/misrepresentation, and evidence of unfair advantage, as well as to disclose adverse documents. The Defendants objected that the Application Documents were not within the scope of the issues on which the Claimant was to give disclosure and that it seemed to be trying to circumvent CPR 63.23. The correspondence showed that the Claimant had no intention of applying to adduce the Application Documents, and so the Defendants filed an application on 10 April 2025 for an order that the documents should not be permitted to be adduced or be included in the trial bundle. That application was heard at the outset of the trial. The Claimant did not file its own application to adduce those documents.

In the witness statement of the Claimant's solicitor Mr Grist, served in response to the application, it was suggested that the Application Documents should be admitted because:

In addition, on Monday 12 May, with the trial due to start on the Wednesday, the Claimant served the Defendants with a small bundle of five further documents (“the CXX Documents”), which it proposed to use for cross-examination. The Defendants objected to those too, on the same basis as the Application Documents, as well as in light of the CMC Order made by Ms Treacy which provided that “Any party intending to rely on a cross-examination bundle shall give the relevant witness adequate notice of the bundle and must at the same time inform the court and the other parties (unless the court gives permission not to notify the other parties) of the exceptional reasons which are said to justify the late introduction of new documents into the case.” The Claimant’s solicitors’ covering letter of 12 May described the CXX Documents as “relevant, proportionate and necessary” but did not, on its face, identify any exceptional reason to adduce them.

The Defendants said that the reasons given by the Claimant to seek to introduce these documents into the trial do not satisfy the rules of IPEC:

The IPEC Guide says:

“The CMC is a particularly important part of IPEC procedure. No material may be filed in the case by way of evidence, disclosure or written submissions unless permission is given by the judge. The first and last opportunity to obtain such permission is likely to be at the CMC. Save in exceptional circumstances the court will not permit a party to submit material in addition to that ordered at the CMC (Part 63 rule 23(2)).”

Mr Roberts KC did not seek to persuade me that the Application Documents fell within the disclosure which the Claimant had been ordered to give, nor, sensibly, did he pursue the adverse documents argument. Instead, he told me that the documents were there to “enhance the accuracy” of the Defendants’ witnesses’ testimony and mainly went to the relationship between the Defendants and certain other companies. However, I was not clear how that reflected any of the Issues I need to decide, nor was I persuaded that the Claimant’s desire to cross-examine on the points Mr. Roberts had identified amounted to an exceptional reason to let in the Additional Documents at this late stage. The mere fact that this was an unusual IPEC case in providing for a three-day trial did not, as Mr Roberts contended, make it exceptional in any way relevant to the application of the rules set out above. I took the view that nothing that Mr. Roberts had said amounted to making a case that there were exceptional reasons to admit any of the Application Documents. I excluded all of them.

Similar points were made in relation to certain of the CXX Documents, and I took the same view about those documents, and excluded them from the trial. However, Mr Roberts KC explained that two of the CXX documents related to different points. The first was said to show the manner in which the First Defendant’s business was presented to the public, in particular as to whether it was presented as offering a payment function. Mr Roberts told me that there were some documents already in the bundle which described the First Defendant’s business in similar terms and took me to them. I considered that these CXX Documents related to what seemed to me, at the outset of the trial, to be very central points in the proceedings, namely, what was the full extent of the Defendants' offering. The second of those documents consisted of a timeline, and again that struck me as an important point in establishing the dates when the Defendants' various activities commenced. It seemed to me that the two CXX Documents potentially went further than the existing documents on these points. I took the view that cross-examination of the Defendants’ witnesses could proceed without these two documents but might be aided by these documents. Whilst I had some doubts as to whether this really amounted to an exceptional reason to allow either document to be used in cross-examination, on balance I decided to permit the Claimant to use those two documents (together only 3 pages) in cross-examination. As it turned out, in my judgment the two documents added very little, if anything, to the case or to the cross-examination by Mr Roberts KC.

The witnesses for the Claimant were Mr Ballarini, its Head of Organic Acquisition, Mr Cian Weeresinghe, its Chief Marketing Officer, and Mr Tormi Tuuling, its Security Operations Lead, all of whom were cross-examined. The Claimant also filed a Civil Evidence Act Notice relating to its records of customers’ calls. The witnesses for the Defendants were Mr Simon Hills, its CEO, and Mr Brett Morris, its Chief Financial Officer, who were both cross-examined, and their solicitor, Mr Hastings Guise, who was not cross-examined. The Defendants filed a similar CEA notice.

No criticism was made by the parties as to the other side's witnesses, save that the Claimant suggested that Mr Hills’ undoubted passion for his business led to a tendency to "colour his answers." Mr Hills certainly was very passionate about the business and at times expanded his answers beyond simply answering counsel's questions. The same may be said, albeit to a much lesser extent, about Mr Ballarini. However, I saw no reason to doubt that their evidence was honestly given, and I found all the witnesses to be reliable and helpful.

The logical place to start with the Claimant’s claims of trade mark infringement is to consider the counterclaim for invalidity of the Wise Logo Mark and the TRANSFERWISE Mark, for if they are partially invalid, as the Defendants claim, plainly it is only the surviving parts of the specification which can be compared to the Defendants’ goods/services.

Section 3(6) of the 1994 Act provides that a trade mark “shall not be registered if or to the extent that the application is made in bad faith”. The Amended Defence and Counterclaim states that the specification of each of the Claimant’s Marks should be invalidated in part because their specifications include “one or more terms of such breadth that the reasonable inference is that the Claimant had no bona fide intention to use them for such a breadth of goods and services” at the relevant application dates. For the Wise Logo Mark and the TRANSFERWISE Mark, the relevant date was 17 October 2018, and for the Recent Marks it was 14 October 2021. The Counterclaim goes on to claim that one can infer that the Marks were intended to undermine the interests of third parties and in particular to be used as a legal weapon in the sense discussed in Lidl Great Britain Ltd v Tesco Stores Ltd [2022] EWCA Civ 1433, rather than to protect the functions of the Marks. On that basis the Defendants challenged the following terms: computer software and application software in Class 9, financial affairs, monetary affairs, financial services and internet accounts and banking in Class 36, and the information, consultancy etc services related to them. “Financial services” is a term in the specification of Recent Mark No. 3710268, but in the 2018 Marks, there is no reference to “financial services” solus, but instead those two words appear in phrases such as “financial services including foreign currency trading…” It was common ground that the use of the term “including” meant that the specification was not limited to services of the specific type mentioned. The bad faith allegation about the Class 9 goods was made prior to the Claimant’s amendment of the Class 9 specification of the Wise Logo Mark and was maintained after that amendment against the Claimant’s applications “as filed” as bad faith is conventionally tested as at the date of filing the application for the challenged trade mark.

After the Counterclaim had been filed, the Supreme Court handed down its decision in SkyKick UK Ltd & Anor v Sky Ltd & Ors [2024] UKSC 36. The facts of the case are well-known; its history is lengthy and convoluted and hard to summarise in any useful way. In brief, Sky Ltd sued SkyKick for trade mark infringement, relying upon five of its Sky trade marks, which were registered between them for an astonishingly wide range of goods and services in a large number of classes. For example, Sky relied upon a UK trade mark No 2500604 which had a specification of goods/services in 22 classes, and which was over 8000 words long. The extensive parts of the trade marks which were relied upon for the infringement action were narrowed down late in the trial but included in particular computer software in Class 9. SkyKick contended that each of Sky's marks should be declared partly invalid on the ground that the goods and services were not specified with sufficient clarity and precision.

Arnold J, as he then was, as the trial judge, referred various questions to the CJEU. Those questions and the answers given by the Court (Case C- 371/18, EU:C: 2020:45, [2020] RPC 4) were summarised by Lord Kitchin at paragraphs 93 to 97 of his judgment. Relevantly to this case, the CJEU ruled that a mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which it was registered lack clarity and precision. That defect alone does not demonstrate bad faith. When the case was restored to the High Court, Arnold J therefore dismissed that part of SkyKick’s case.

Arnold J held that the marks had been applied for partly in bad faith, because Sky did not intend to use the marks in relation to some goods and services covered by the specifications and there was no foreseeable prospect that they would ever use the marks across the board. He accepted that Sky had a strategy of seeking very broad trade mark protection regardless of whether it was commercially justified. In addition, in relation to the UK trade mark mentioned above, Arnold J found that Sky had made a false declaration under section 32(3) of its intent to use the mark, which was inconsistent with honest practices, which strengthened his conclusion that to that extent the application was made in bad faith. He went on to recast some of the specifications, doing his best to reflect the extent to which bad faith had been proved, yet to give Sky fair protection. In particular, he narrowed down Sky’s “computer software” to specific kinds of software (see [110] of the Supreme Court judgment).

Sky appealed successfully to the Court of Appeal against the findings of partial invalidity, and SkyKick then appealed to the Supreme Court. The lengthy judgment of the Court was given by Lord Kitchin. Lord Kitchin identified two categories of bad faith applications, the second of which is where the application for registration constitutes, in respect of all or some of the goods or services for which protection is sought, an abuse of the trade mark system. To make good such an objection it is necessary to show:

“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.”

Lord Kitchin distilled the general principles at paragraph 240. I set out a slightly shortened version below, underlining the points most relevant to this 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 thatinfringement 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).”

It does not seem to me that anything in Lord Kitchin’s summary detracts from the pre-existing UK position, that a person is presumed to have acted in good faith unless the contrary is proved, and an allegation of bad faith is a serious allegation which must be distinctly proved, see e.g. Red Bull GMBH v Sun Mark Ltd [2013] E.T.M.R. 53. On the other hand, Skykick shows that in appropriate circumstances, the proprietor may need to provide a satisfactory explanation for the application. Lord Kitchin said:

“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. …

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.”

At paragraphs 259-263 Lord Kitchin considered the problem of the use of general terms and broad categories, the essence of the Defendants’ allegation of bad faith in the case before me:

“259.

The use by an applicant of general terms to describe the goods and services for which it seeks protection presents a further problem. It was submitted on behalf of the Comptroller-General that the Court of Appeal, at paras 113 and 116 of the judgment, appears to preclude a finding of bad faith arising from the use by the applicant of overly broad categories of goods and services (for example, software) where the applicant had an intention to use the mark in relation to some but not all of the goods and services within that broad category, and that this appears to be so even where such a term manifestly covers sub-categories of goods or services in relation to which the applicant never had any intention of using the mark and there was no realistic prospect of it ever doing so.

260.

This is the second area of concern for the Comptroller-General and again, I think that concern is justified. It would in my view be anomalous for traders who use broad terminology to describe the goods and services for which they seek protection to find themselves in a more favourable position than those who use appropriate sub-categories to describe the same goods and services, and I would reject any interpretation of the legislation that necessarily leads to that conclusion. Of course, the matter must be judged as at the time of the application. … I see no reason why a person should be permitted to apply to register a mark or retain a registration in respect of distinct categories of goods or services in relation to which it never had any intention to use the mark, simply because it chose to use a broad description of those goods and services which meant they were encompassed together with goods or services about which no complaint is made.

261.

I would mention two other matters in this context. First, there can be no doubt that an application to register a mark in respect of a broad category of goods or services may be made partly in bad faith … the essential criterion to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently is their purpose and intended use.

262.

Secondly, it is now possible to dispel the concern expressed by counsel for the Comptroller-General that it is doubtful whether the introduction of restrictions on the use of broad terms in trade mark specifications will alleviate the problem of cluttering, at least without the objection of bad faith filing ‘having some teeth’. In my opinion, and for the reasons I have given, the objection does have teeth: indeed, it has essentially the same teeth whether one is concerned with an unduly broad specification which uses general terms or specific sub-categories to describe goods or services and which, in either case, includes or identifies sub-categories of goods or services in relation to which the applicant never had any intention to use the mark.”

Lastly, I should mention some of Lord Kitchin’s conclusions on the merits:

“322.

There was a further point here which I must make at this stage, namely the impact on these issues of the use by Sky of general terms such as (but by no means limited to) ‘computer software’ (as goods and as a service). An applicant does not have to have a commercial strategy to use a mark for every possible species of goods or services falling within the specification. Nor is it an objection that the applicant has applied for a wide range of goods and services using class headings or other general terms. That objection, which is one of clarity and precision, has largely gone away in the light of the decision of the CJEU in this case.

323.

Where, however, the broad description includes distinct categories or subcategories of goods or services, as ‘computer programs’ and ‘computer services’ undoubtedly do, then, for the reasons I have given, the proprietor may be found to have acted in bad faith in relation to one or more of those, and it would be manifestly unjust if it escaped that consequence simply because it had framed its specification using general terminology. …”

As Daniel Alexander KC, sitting as the Appointed Person, said in O/0534/25 CNVRGCNVRG.IO trade mark (decided after the trial of this matter, on 12 June 2025) at [40] “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.” Mr Alexander went on:

“48.

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.”

The specifications of the Wise Logo Mark and the TRANSFERWISE Mark include terms such as computer software and financial affairs which are broad and imprecise. Those are the sorts of terms which may now be challenged at the application stage (see the UKIPO’s new PAN 1/2025) and in the case of the Wise Logo Mark, may well, depending upon the evidence, be narrowed down to particular sub-categories of software or financial affairs/services as a result of the impending non-use challenge in the Defendants’ 2024 proceedings. The computer software terms plainly fall within Lord Kitchin’s point at [323] of Skykick, and it seems to me that financial affairs, monetary affairs and financial services (not currently effectively delimited by sub-category)do too.Indeed, I am unclear as to the distinction (if any) between financial affairs and financial services. On the other hand, I do not consider that the term internet accounts and banking can be criticised in the same way.

As explained above, the inclusion of imprecise terminology cannot, without more, be said to show that the Marks were applied for in bad faith. Each application needs to be shown to have been filed as an abuse of the trade mark system. I have set out the extent of the Defendants’ pleading of bad faith above and the question is whether in the circumstances the Defendants have raised an inference which rebuts the initial presumption of good faith, such that the Claimant needs to explain and provide a plausible explanation of the objectives and commercial logic pursued by the applications. In its Reply, the Claimant had claimed that at each application date it had either already been using the marks for the goods/services registered, or had the intention of doing so, alternatively, it had the intention of using them for at least some of the goods/services. However, it did not otherwise explain its filing strategy. I was told that it had successfully resisted a request to give disclosure on the point and filed no evidence supporting the Reply by dealing with its strategy in 2018 or 2021. In addition, none of the Claimant’s witnesses was able to speak to its trade mark filing strategy.

The question of whether the Defendants have raised an inference of bad faith must be considered in the light of the surrounding circumstances, including the evidence about the nature of the Claimant’s business (and any reasonably foreseeable or natural expansion of that business) at the time the applications were made. My comments are based on the somewhat limited evidence before me and are not intended to pre-empt the proper consideration in the course of the 2024 proceedings of the Defendants’ allegation of non-use of the Wise Logo Mark. It appears that the Claimant started as a money transfer business and has expanded its business over the years to offer a range of money transfer and banking-type services, such as accounts for holding customer money and a payment card. Mr Ballarini identified a range of such services, some of which were launched prior to the 2018 trade mark applications, and others between the 2018 and 2021 application dates. The challenged terms in the Class 36 specifications are broad and imprecise, and it is plain from the specifications themselves that it would be possible to file an application for an adequate trade mark in more specific terms. The “including” sub-categories of the Class 36 specifications (if properly limited) would it seems to me reflect the range of services which the Claimant says it has offered. However, given the expansion of the scope of the Claimant’s business both before and after 2018, it does not seem to me that I can infer that there are further sub-categories of financial etc services in relation to which the Claimant never had any intention of using the mark and there was no realistic prospect of it ever doing so. With some hesitation, therefore, I conclude that the Defendants have not raised a sufficient inference that the impugned parts of the Class 36 specifications were filed in bad faith to transfer the burden of proof to the Claimant to justify its trade mark application strategy.

However, I have reached the opposite conclusion in relation to the broad terms challenged in the Class 9 specifications of the 2018 Marks. Mr Ballarini described the Claimant as a software business and said that in addition to making its own applications (by which I assume he meant that the Claimant designs software facilitating use of its services) it releases open-source code on GitHub. He said that such software was not solely relevant to finance and exhibited a list of the Claimant’s code on GitHub, dating back to 2014. No evidence was given by the Claimant as to whether such software was downloaded by third parties, and, if it was, as to the scale of such use, nor of use of the Marks in relation to it. Mr Guise gave unchallenged evidence on the figures shown on GitHub, suggesting that the Claimant’s software was not popular.

As long ago as 1995, in Mercury [1995] FSR 850,Laddie J. said that there is a strong argument that a registration of a mark simply for ‘computer software’ will normally be too wide, and that the defining characteristic of a piece of computer software is the function it performs. Whilst I appreciate that software is an essential tool of the Claimant's business and may very well be designed by or for the Claimant, it does not seem to me that this justifies the Claimant’s application to register a trade mark for software of every conceivable kind. The software which the Claimant uses and which its customers use enables it to provide its money transfer and other services, but it is clear that 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, could not justify such an application, it seems to me that it is clear that it would be the case for the Claimant too. I take support in that view from several of the confidential documents in evidence (FB20, FB22) which predated the change from TransferWise to Wise Payments. They referred to the Claimant’s products and did not suggest that those included software products, even though some software had by that time been uploaded to GitHub. There must have been many sub-categories of software in relation to which the Claimant never had any intention of using the Marks and there was no realistic prospect of it ever doing so.

I conclude that in relation to the computer software and application software in Class 9, the Defendants did raise 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 raises a concern about the Claimant’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 the Claimant to justify its trade mark application strategy, and it completely failed to do this. 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.

In the circumstances, I consider it right to amend the specifications, to restrict them to a reasonable specification for the business including a penumbra of protection or range of goods/services into which the Claimant might, as at the date of application, reasonably have been expected to or intend to expand its business.

The allegation of bad faith relates back to the date of filing and so it appears to me that I should consider how to deal with the computer software and application software without reference to the subsequent amendment of the Wise Logo Mark specification, although plainly that amendment will stand, so far as appropriate. The Defendant contended that the challenged terms should be expunged from the Class 9 specification altogether, whilst the Claimant suggested that the amendment made in 2024 would achieve an appropriate specification by qualifying the simple terms computer software and application software by the phrase all the aforementioned goods in connection with financial services, monetary services, banking services, investment services, cryptocurrency services and travel insurance services.

The specific terms in the Class 36 specifications from 2018 seem to me likely to reflect the Claimant’s own view at the relevant time of the scope of the financial services it was offering or would be likely to offer and hence of the software it might supply. There was no reference in the Class 36 specifications to investment services, cryptocurrency or insurance. Mr Ballarini explained that the Claimant had decided (he did not say when) not to deal with cryptocurrency and that an interest in travel insurance is at an exploratory stage. It is not licensed to pay interest to clients, and Mr Ballarini did not describe any investment services in terms of giving investment advice. The Claimant put forward some suggested wording as a fallback position, which I accept in large part, but which I consider should exclude the kinds of services just discussed, as giving too wide a penumbra of protection to the Claimant. It seems to me that the appropriate amendment would be “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” In addition, I think it right tomaintain the qualification to the Wise Logo Mark already on the Register, so as not to inadvertently widen the specification, namely all the aforementioned goods in connection with financial services, monetary services, and banking services. The Class 9 specifications as amended are:

It was common ground that the relevant date for assessment of trade mark infringement is the date when the Defendants commenced the acts complained of, and if a Defendant materially changes his manner of use of the impugned sign at a later date, a new global assessment must be made as at that date: Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454 at [94]. The Defendant started trading under the name Wise in about March 2020. The Claimant sought to persuade me that the evidence showed that there had been no use of the Defendants’ Signs in relation to payroll or payment services until a rather later date, either when the Defendants’ app was launched in April 2021, or when further functionality was added to the app (as plainly it was) in early 2022. I consider the scope of the Defendants’ business under the Signs below, but in terms of setting the relevant date for infringement it is clear from the Defendants’ website pages from April 2020 that from the outset they offered “payroll management” (a service which the Claimant alleges is identical to parts of its specifications).

The Claimant suggested that there had been a significant change in the Defendants’ business in April 2021, when it launched its app. It said that the Defendants had “changed lane” into the “path of the juggernaut,” and started offering payment services at that stage, if not, indeed, when the app was improved in 2022. I do not accept the Claimant’s description of the position. There was little evidence as to when the Defendants started to refer to offering payment services as well as payroll services. However, payment was mentioned in a webpage from as early as May 2020 (“the service is end-to-end from recruitment to payments”), and in the Linked-In page for Dan Richards, the Fourth Defendant, said to be from June 2020 (“Wise provides market-leading software for onboarding, payments & Compliance”). References to “payment technology” were made from at least April 2021, for instance on a website page from 22 April 2021.

The relevant date is therefore around March/April 2020 for the onboarding services and payroll management. It is less clear what is the right date for payment technology, however it seems on a balance of probabilities to have been May 2020, and at the latest it was April 2021. The amendments to the Defendants’ app in 2022 are in my judgment irrelevant to this point.

The Claimant alleges that the Defendants have infringed the Wise Logo Mark by using their Signs in relation to goods/services identical or similar to its specification, so as to cause a likelihood of confusion contrary to s 10(2) of the Act. There is a standardised summary of the principles by which the requirement of a likelihood of confusion should be assessed. It is expressed in terms referable to the registration context but applies also to infringement cases, as set out by Arnold LJ in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus LR 1097, at [27]:

“(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.”

Whilst those principles apply when considering infringement, it is also necessary to consider the actual use of the sign complained of in the context in which it has been used. As Kitchin LJ put it in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [2012] FSR 19 at [87]:

The context in infringement proceedings under section 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”: see O2 Holdings Ltd v Hutchison 3G UK Ltd (Case C-533/06) [2009] Bus LR 339, para 67. Arnold LJ added in Morley's (Fast Foods) Limited v Thurairasa Nanthakumar & others [2025] EWCA Civ 186:

“29.

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.”

The parties’ positions on the similarity of the Signs to the Wise Logo Mark were poles apart. The Claimant submitted that the dominant element of the Mark is the word Wise, and that the Defendants’ Signs (which include the plain name Wise) are visually similar to the Mark to a high degree, as the most distinctive element of each is the word Wise, are identical aurally, as Wise is the only element that will be pronounced, and are conceptually identical in sharing the concept of wisdom, with the device adding no meaningful concept. The Defendants, on the contrary, said that the Mark was dominated by the large blue rectangle, and that the text and flag device are barely visible. The Mark’s visual elements are not found in their Signs. They suggested that the text of the Mark is so small that it would not be read out, so that there was no aural similarity, and that the Wise Logo Mark had no conceptual message other than the blue rectangle and the conceptual dissonance meant that the Signs are not similar to the Mark.

In my judgment, both parties’ positions go too far, and both invite the Court to ignore elements of the Mark rather than to assess the Mark as a whole, which it is well-established is the appropriate approach. From a visual point of view, I accept that the name Wise is the dominant feature of the Wise Logo Mark, especially as words generally speak louder than figurative elements. On the other hand, the purely visual elements of the Mark cannot be ignored, they are not negligible, and there is nothing in the Defendants’ Signs which resembles those elements. Moreover, two of the Defendants’ Signs are themselves stylised to a moderate degree, and that stylisation is not particularly similar to the Mark. I conclude that the Signs are all visually similar to the Wise Logo Mark; the simple word Wise is visually similar to it to a medium degree and the stylised Signs to a lesser degree. I accept that the Signs/Mark are aurally identical. Conceptually, both the Signs and the Mark carry the concept of wisdom, but the Defendants’ Signs lack the modest impact that the flag device might have upon a consumer, whether or not they recognise it as a flag. I find them conceptually similar to a medium-high degree. Overall, in my judgment, there is a medium-high degree of similarity between the Wise Logo Mark and the Defendants’ Signs.

At trial, the Claimant clarified the goods/services provided under the Defendants’ Signs which it says infringe their rights. They are:

The Amended Particulars of Claim had identified the business about which complaint was made as “providing onboarding software and related services to self-employed individuals and businesses that engage and/or contract with a self-employed workforce, primarily drivers, for the purpose of managing that relationship.” Nevertheless, the Claimant explained in closing that it took no objection to the Defendants’ logistics services, driver onboarding/offboarding services or driver documentation services, and no objection to the provision of those services via a mobile app, as long as such goods/services did not include any of the five categories of goods/services listed above.

The Amended Particulars of Claim stated that, “The services provided by the Defendants through the Defendants’ Website and/or Defendants’ App are described by the Defendants as including, inter alia, “payment technology” and “payroll management”.” Screenshots of the relevant pages of the Defendants’ Website were annexed to the Amended Particulars of Claim. Those pages from 2022 referred to “Payment technology” and “Payroll management” adding “Mitigate self-billing via the Wise platform and take the stress out of payday.” Mr Weeresinghe exhibited pages from the Wayback Machine showing that the same or similar terminology had been used on the Defendants’ website since at least April 2020. In addition, the Amended Particulars of Claim referred to promotional videos, pages from which were exhibited to the pleading. Apparently, the videos were found by the Claimant’s inquiry agents in October 2021, although the copies annexed to the Amended Particulars of Claim are dated May 2022. One of these showed a "Make payments" button within the Defendants’ app, another was headed "New payment run" a third referred to "Missing payment details… You will not be able to use Wise to pay a driver without payment details” and a fourth to "Payment Summary."

The Defendants submitted that the pleading set the parameters of the case of infringement they had to meet, and objected that tax advisory services, costs management and management of fines formed no part of the Claimant’s pleaded case. Those terms do not appear in the body of the Particulars or the webpages annexed to them (one reference which I was given to Annex 12 did not appear to me to help). So far as I can tell, those services were first mentioned in the Claimant’s skeleton argument and whilst it was said that it had become apparent that these additional services were offered by the Defendants, the references given in the skeleton appeared to me only to show that the Defendants can offer to connect drivers to accountants for help with UTR registration, tax filing, and other financial tasks. That did not, in my judgment, show that the Defendants offered such services themselves. The Defendants naturally objected that they had not come to trial prepared to meet a claim that covered such services, and they were not addressed in their disclosure or evidence. In all the circumstances, it seems to me that it would be unfair to the Defendants and wrong in principle to treat tax advisory services, costs management or management of fines as part of the allegation of infringement.

The Defendants also objected that “payment services and invoicing services, including managing, organising and arranging payments and invoices, payroll services” is a wider range of services than the pleaded “payment technology” and “payroll management” services. Certainly, there is no direct reference to invoicing services in the Amended Particulars of Claim, and it seems to me that the Claimant added this to the list of services to which it takes objection in light of the Defendants’ evidence that it does not provide payment or general invoicing services, but provides facilities for invoices to be generated for drivers. I agree that “payment services” is wider than the pleaded term “payment technology.” However, I consider that “payroll management” is a broad term, which could encompass managing, organising and arranging payments and invoices, or providing payroll services. I consider that the appropriate comparison to the Claimant’s specification would be for payment technology and payroll management, including managing, organising and arranging payments and invoices, as well as payroll services.

The Defendants accepted that the Amended Particulars of Claim claimed infringement by provision of software, including an app, which offers and supports any of the services listed in categories (i), (ii) and (iv) above.

Before considering the parties' rival contentions as to the similarity of goods/services, it is necessary to consider whether the Defendants have used their Signs on or in relation to payment technology and payroll management, including managing, organising and arranging payments and invoices, payroll services or indeed the provision of the relevant software, as the Defendants contended that they had not used their Signs in relation to any such payment services or software.

I accept the evidence of Mr Hills and Mr Morris that the First Defendant cannot effect payments on behalf of its customers and does not do so, and that payment facilities are provided by a connected but nevertheless legally separate company, Modulr, which is not a party to the proceedings. Indeed, there was no evidence before me that Modulr uses the Defendants' Signs. Mr Hills’ evidence was that any of its contractors wishing to use Modulr’s services would sign up to Modulr separately and would be well aware that payments were being effected through a Modulr account (or some other third-party bank account) not through the First Defendant.

The difficulty for the Defendants is that its own descriptions of its services make repeated references to payment. In addition to the pleaded instances which I have set out at [63] above, Mr Hills was taken in cross-examination to some marketing materials for the First Defendant of uncertain date, other than that they were exhibited to Mr Weeresinghe’s witness statement of November 2024. One such exhibit shows what I believe to be a page from the First Defendant’s website. Under the heading "Welcome to Wise" this says "Wise is a payment services provider. Through Wise, you can access specialist self-employment tax advice to help courier drivers manage their tax admin and maximise take-home pay. Pegasus Couriers have partnered with Wise to process all driver payments and to offer added services." It referred to using a government approved flat rate VAT scheme and at the bottom of the page it said "It’s important all drivers download the app to ensure Wise capture bank details for payments…” When cross-examined on this, Mr Hills did not accept that Wise is a payment services provider, but accepted that the Defendants needed to "sharpen up” some of their terminology as they had what he described as "a little bit of a problem there regarding some of the terminology we used." Mr Hills thought changing “payments” to “invoices” would clarify the position. He made similar remarks when taken to (a) another website entry from September 2023, "Streamline your driver payments. Process weekly, bi-weekly and monthly payments" and "Build and manage payments in one platform. Let The System Do All The Hard Work … you can easily input your drivers [sic] pay into the portal, leaving the payment distribution to us,” (b) some wording about simplifying paying a workforce from one of the CXX documents, and (c) the promotional video exhibited to the Amended Particulars of Claim. For example, Mr Hills explained that all that the First Defendant would do when the customer hit the "make payments" button would be to generate a CSV file (in effect a spreadsheet) which would enable the contractors to pay their subcontractors in an efficient manner. Mr Morris was also taken to a document referring to future “payment functionality”, brought in, as the Claimant accepts, through the link to Modulr.

In my view, the references to payments of that sort in the Defendants’ website and materials may have overreached the Defendants’ actual offering, as Mr Norris KC submitted, but they would nevertheless have been likely to lead a customer to think that the First Defendant was providing some sort of payment facilities, technology or services, even if that was not correct for the reasons given by Mr Hills. The separation of the services the First Defendant offered from the payments which could then be effectuated through a third party was inadequately explained. Indeed, Mr Hills was taken in cross-examination to a page from the website of one of the First Defendant’s contractor customers, Pegasus Couriers. The page was recorded on the Wayback Machine in July 2023 and appears to set out questions and answers for Pegasus’s drivers, in which Pegasus said that “all driver payments are made through an accountancy firm called Wise.” So it appears that Pegasus had misunderstood the way the Defendants’ system worked, although, in the absence of evidence from Pegasus, I suppose it is possible that it was seeking to simplify matters for the benefit of its drivers.

In addition, it is clear that the First Defendant was offering payroll facilities. That was the case from around the time it started trading as Wise, as shown in pages from its website from inception in about April 2020. So, through its website from 2020 and then also through its app from 2021, invoices could be generated for drivers, which would lead to payment of those invoices by the contractors, even if the payment was being effected through a third-party bank. This may not have amounted to the provision of a full payroll service but in my judgment it amounts to providing elements, indeed, important elements, of a payroll service.

I conclude that the Defendants may have advertised payment services, but they have supplied a narrower range of services all of which to my mind amount to payroll services and include the generation, provision or submission of invoices.

The Claimant contended that “Payment services and invoicing services, including managing, organising and arranging payments and invoices” (which in the light of my conclusions above should be limited to payroll management, including managing, organising and arranging payments and invoices, and payroll services) are identical (or highly similar) to its Class 36 Financial affairs; monetary affairs … relating to the transfer of funds and providing methods for payment …; financial services including … payments…; and electronic money services. The Defendants denied this. Their position was that financial and monetary services involve customers moving or trading in money or financial assets. A supplier of such services requires a licence from the FCA which the First Defendant lacks, so it cannot be said to be providing such services.

I consider that organising and arranging payments is identical (applying the Meric test) or highly similar (applying the usual Canon criteria) to the very broad term “financial affairs” and to “monetary affairs ... providing methods for payment.” However, for the reasons given above, I find that that the Defendants have not provided such services, as opposed to payroll services, despite the misleading references to payments on the website/app.

The Claimant submitted that “Payroll services” are identical (or highly similar) to the same parts of the Class 36 specification. In my judgment, payroll services are identical to “financial affairs" and are 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.

The Claimant claimed that the Defendants had provided software both through the website and through the app. The Defendants contended that all they had done was provide onboarding etc services, accessed by the use of software. I do not accept that distinction. It seems to me that the Defendant has provided software in two ways. First, it has provided software online in the form of Software as a Service, or Platform as a Service, through its website. There were a number of references in the evidence to the Defendants’ platform and in the absence of any evidence to the contrary I assume that, as would be usual, such software was non-downloadable (so would not fall within Class 9). In addition, the Defendants’ app is downloaded by the drivers, and seems to me to be downloadable software, falling within Class 9. The Defendants made a number of references in the Amended Defence and Counterclaim to the First Defendant’s goods and services, and the downloadable software appears to me to be the only ‘good’ to which it could have been referring.

The Claimant said that “Software, including a mobile app, which offers and supports any of the foregoing services” is identical to its Class 9 “computer software and application software; …all the aforementioned goods in connection with financial services, monetary services.” Allowing for my findings and amendment of the Class 9 specification, I conclude that the Defendants have advertised and offered downloadable software which at the least provides the generation, provision or submission of invoices and is a sub-set of the Claimant’s Class 9 goods, and so is identical to them. Providing the same sort of software in a non-downloadable form would have the same trade channels, purpose etc., and so such non-downloadable software is similar to the Claimant’s Class 9 software.

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 characteristics and role of the average consumer were summarised by Arnold LJ in Lidl Great Britain Limited v Tesco Stores Limited [2024] EWCA Civ 262 at [16] - [20], reinforced in Morley's. 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”: London Taxi Corpn Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729; [2018] FSR 7 per Floyd LJ, at [34]. As Arnold LJ said in Morley’s at [18]:

“The purpose of the exercise in a case such as the present is to assess how the average consumer would select the relevant goods and services and the level of attention which would be paid by the average consumer. “

The Claimant submitted that its customers were members of the general public, who might use its services e.g. for effecting money transfers, as well as business customers of various sizes. It said that both individuals and businesses might overlap with the average consumer of the Defendants’ goods/services. I think that the Defendants broadly agreed, as they identified their own consumers as the carriers, main contractors, and sub-contractors, who include the drivers. The instances of alleged confusion showed that some people were customers of both sides.

The likelihood of confusion must be appreciated globally, taking account of all relevant factors. I have already concluded that the Wise Logo Mark is similar to the Defendant's Signs to a medium-high degree and that certain of the goods and services in the Mark's specification are identical or similar to the goods and services of the First Defendant.

The Claimant claimed that when assessing the likelihood of confusion I should in addition take into account the enhanced reputation of the mark Wise. This was pleaded as arising from the way in which the TransferWise name and logos were used up to February 2021 and Mr Ballarini said that the existing “brand equity” in Wise was a factor when considering the change of name, although he also said that people would understand it quickly because of their familiarity withTransferWise. In my judgment, the documents do not support the claim that Wise solus had a reputation in 2019 when the Claimant started to plan the change of name, nor in February 2021 when the Claimant made the change. For instance, a confidential document from 2019 setting out the pros and cons of changing name referred to the brand equity in TransferWise, but did not refer to brand equity in Wise alone. On the contrary, that presentation and similar documents expressed real concerns about moving to Wise and contemplated moving to an entirely new name. In my view, this showed that the Claimant itself did not perceive Wise as having a reputation independent of the full name TransferWise. The Claimant also relied upon a confidential spreadsheet of the search terms leading people to its site between 2016 and 2021 when the name changed. None of these consisted simply of the word Wise, although a minority of searches used terms other than TransferWise which started with Wise, such as ‘Wise transfer’ or ‘wise bank.’ In my view, those results do not support the claim that Wise had its own reputation by February 2021 even if that were the relevant date for considering the point, which, for the reasons given above, it is not. They mainly show people using permutations of the TransferWise name, and the numbers of searches for ‘wise.com’ or ‘wise bank’ are too small in number to be significant. Overall, I consider that this is not a factor I should take into account in assessing the likelihood of confusion.

As I have said, both sides began experiencing instances of confusion from around June 2021, after the Claimant’s change of name, and the launch of the Defendants’ app. Mr Roberts KC said that all of the confusion which had occurred was in the “payment financial services space”. The Defendants contended that this confusion arose because of the Claimant’s rebrand from TransferWise to Wise, not because of changes made to their business or the launch of their app. I think that is probably correct, although as I have said, there was the added problem that both sides were offering a Wise app for download. Customers of the Claimant started to approach the First Defendant, whilst its own customers approached the Claimant. No such contact had been recorded before the Claimant’s rebrand.

The witnesses were cross-examined on a number of the documents recording these interactions (some call transcripts, some emails). I was invited by both sides to consider many more of those documents which were identified in their skeleton arguments. I have done so, and have listened to some recordings of the calls, but I have not found this evidence especially helpful in deciding whether there is a likelihood of confusion between the Wise Logo Mark and the Defendants’ Signs. In the great majority of cases, it is not possible to tell what caused the caller/customer to approach the ‘wrong’ party and it is certainly not possible to tell whether any caller was familiar with the Wise Logo Mark and confused any of the Defendants’ Signs with it.

Taking the fairly typical example annexed to the Amended Particulars of Claim, the customer approached the Claimant about a text message asking them to download an app, asking whether the message came from the Claimant. At first, the Claimant’s operator suggested that this was a scam, but later she explained that the app in question was the Defendants’ app. Plainly, there was confusion because both parties were using the Wise name for an app, but there is nothing in the exhibited exchanges which indicates that the customer was familiar with the Wise Logo Mark. In another example from November 2022, discussed with Mr Tuuling in cross-examination, a customer had lost his wallet and phone, and had called the Claimant for help. It seems likely that the caller was one of the Claimant’s customers, as the operative found his details on the Claimant’s system. Towards the end of the call, he referred to money owed to him from working for Amazon and asked the operator if payment could be expedited. He said “I think maybe they are not the same anyway but there is a company Wise, Wise also … I sent them an email.” When he gave the operator a withwise email address, they told him not to communicate with the Defendants as this seemed to be a scam. In my judgment, it is not clear that this person was confused at all. He was doubtful about whether the companies were connected, at the highest he wondered whether there was a connection between them, he did not assume one. Further, one cannot tell whether he drew a connection between the parties because of his pre-existing knowledge of the Wise Logo Mark or not. It is possible that it was simply because both parties were trading under the name Wise. A similar point can be made about someone who emailed the Claimant in October 2022 when having trouble using his app. It is unclear why he emailed the Claimant, as he had received an email from the First Defendant, but it seems possible that he had downloaded the Claimant’s app rather than the Defendants’. By contrast, someone called the Claimant in October 2023 asking for help with his app. He plainly had the Defendant’s app. He eventually said “I think I might be ringing the wrong company because my app is actually withwise.com. Are you Wise.com only?”

Another example related to someone who was a customer of the Claimant, who called the number on the back of his TransferWise bank card with a query, and seemed to think it had come to him via Securitax, a company which had offered accountancy services to the Defendants’ customers. He thought Securitax had “changed their name to Wise.” The caller plainly was confused, but again, there is no reason to think that his confusion arose because he made a connection between the Wise Logo Mark and the Defendants’ Signs. In one early example of an instance of alleged confusion recorded by the Defendants, in May 2021 a customer emailed Mr Richards of the First Defendant asking why a donation had not been credited to its account. Mr Richards quickly worked out that this was someone confusing them with the Claimant. Again, it is not possible to tell what caused this person to contact the Defendant rather than the Claimant. Similarly, in an example from November 2021, someone emailed asking how to deal with a transfer from a Belgian bank to a UK bank. Plainly he was a customer of the Claimant. But how he came to email the First Defendant is unknown, as the customer asked, “Do you have a UK contact telephone number?” There were many other examples recorded by both sides.

The fact that quite a large number of people contacted one side in this case instead of the other is evidence of confusion arising from the similarity in their names and identity of their trade names. It is hardly surprising. However, in the absence of more details, it is difficult to place too much reliance on any particular example of alleged confusion in deciding whether there is a likelihood of confusion between the stylised Wise Logo Mark and the Defendants’ Signs. Having carefully considered numerous alleged instances of confusion, I am not persuaded that the Claimant has identified any example of such confusion.

However, the absence of evidence of actual confusion is rarely decisive as to a likelihood of confusion, for this depends on the facts, and may in particular depend on whether evidence of confusion would have been likely to come to light. The longer the parties trade side by side without confusion is also relevant. In easyGroup v Nuclei [2023] EWCA Civ 1247, [2024] F.S.R. 9 Arnold LJ said,

“77.

As I discussed in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus. L.R. 1097; [2023] F.S.R. 18 at [39], with the agreement of Nugee LJ and Lord Burnett of Maldon CJ, absence of evidence of actual confusion is not necessarily fatal to a claim under section 10(2) / Article 9(2)(b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. In considering the weight to be attached to this factor, it is relevant to consider what opportunity there has been for confusion to occur and what opportunity there has been for any such confusion to have been detected.”

Here, side by side use can have started only in March 2021, and the proceedings were issued on 23 September 2022. As I have explained, plenty of confusion has been detected, but it is unclear how much of it may be relevant to the alleged infringement of the Wise Logo Mark.The Claimant cannot say that any confusion must have arisen because of a connection made between the Wise Logo Mark and the Defendants’ Signs, because, however much use there had been of the registered mark (an issue for the separate proceedings) it is plain from numerous documents that the Claimant often used the simple name Wise or Wise Payments.

However, whilst the alleged instances of confusion do not amount to clear or consistent evidence of infringement, in my judgment it cannot be said that the absence of such evidence shows that there is no likelihood of confusion between the Wise Logo Mark and the impugned Signs. The problem before me is that I do not find it possible to identify the cause or nature of any confusion from the documentary evidence before me. The Defendants may seek to say that the Wise Logo Mark is unused, or little used, or used in a materially different form, but I cannot reach a view on that point at this stage.

I conclude that in this case I should consider the position as if the Mark was unused but remained validly registered. The cohort of average consumers includes a large number of drivers who are average members of the public, as well as a smaller cohort of contractors. Whilst I do not consider that the alleged instances of confusion are reliably probative of confusion, some of them may be, and a number of the calls or emails certainly suggest that some of the Defendants’ customers may also be customers of the Claimant. I take into account the potential impact of imperfect recollection of the Wise Logo Mark, with its rather moderate stylisation, and that I have found a medium-high degree of similarity between the Wise Logo Mark and the Defendants’ Signs, especially the name Wise solus. There is use of the Defendants’ Signs in relation to goods/services which are identical or similar to the goods/services of the Wise Logo Mark. I also take into account the context of use, in particular when the Defendants’ Signs are used on their app, where they are likely to be seen on a small mobile phone screen, where distinctions from the Wise Logo Mark may be less apparent to the average consumer. As against those facts, there has been a fairly substantial period during which reliable evidence of confusion (between the Mark, if used, and the Signs) might have been expected to come to light. Balancing all of these factors, I have concluded that even without clear evidence of actual confusion, there is a likelihood of direct confusion between the Wise Logo Mark and the Signs when used in relation to the identical and similar goods/services which I have identified above.

The Claimant claims that the Defendants’ activities have led to infringement of the TRANSFERWISE Mark in breach of both sub-sections 10(2) and (3) of the Act. Both sub-sections require there to be similarity between mark and sign. In my judgment, the Defendants’ Signs are considerably less similar to that Mark than to the Wise Logo Mark. The Claimant invited me to find that the Mark would be perceived as two words, of which the ‘wise’ element is the dominant and distinctive component. I do not accept that submission, which appears to me to seek artificially to dissect the Mark in a way which is inappropriate and would be unlikely to be done by the average consumer. Although ‘transfer’ may be a descriptive element of the Mark, there was no evidence to suggest that the average consumer would ignore the word altogether, especially as it is at the beginning of the Mark, even if the fact that the Mark is made up of two words was emphasised by its frequent presentation as ‘TransferWise.’

In my judgment, the inclusion of the word ‘transfer’ before ‘wise’ has a real impact on how the Marks/Signs would be perceived visually, aurally and conceptually. Visually, the Mark/Signs differ because of the inclusion of the word ‘transfer’ in the former and (to a lesser extent) the modest stylisation of two of the Defendants’ Signs. I find that there is a low level of visual similarity. Aurally, obviously the conjoined words ‘transfer’ and ‘wise’ will be pronounced in full in the Mark, and the first part of the Mark is likely to be given more emphasis than the last syllable. There is a very low level of aural similarity. The inclusion of the word ‘transfer’ in the Mark adds a conceptual element wholly lacking from the Defendants’ Signs, but I do not accept the Defendants’ submission that the Mark/Signs are conceptually dissonant, still less that there is sufficient conceptual difference to outweigh the visual and aural similarities. I find that there is still some level of conceptual similarity. Overall, in my judgment, the level of similarity between the TRANSFERWISE Mark and the Defendants’ Signs is low.

I have dealt with the similarity of the goods and services and the identity of the average consumer above. The only distinction is that the TRANSFERWISE Mark does not have precisely the same Class 9 specification as the Wise Logo Mark, by reason of the Claimant’s own amendment to the latter. I do not think that this affects the analysis of similarity of goods/services.

The Claimant suggested that some of the disclosure proved that there had been confusion between ‘TransferWise’ and the Defendants' Signs. For example, I was invited to find that the log of the call which I have described in paragraph [85] above showed such confusion. I do not think that it is possible to draw that conclusion, given that the caller explained that he called the Claimant because that was the number on the back of the bank card which he was trying to use. The Claimant also pointed to an email of November 2021 from one of its customers to the First Defendant. He said “I have been using TW for years (now Wise) but still managed to make a mistake when transferring money …” There is nothing in the email to show that the writer confused TransferWise with the Defendants’ Signs, nor indeed to explain how it was that he came to email the wrong company. That may of course have been simply because both were by that time trading as Wise. The third example given by the Claimant in closing was from February 2022, when someone at the First Defendant warned a colleague that sometimes drivers were downloading the wrong app because they were confused with another company/app named TransferWise. As by then the Claimant had traded as Wise for about a year, in my judgment this does not prove confusion between the TRANSFERWISE Mark and the Defendants’ Signs.

There is no alleged instance of confusion between the TRANSFERWISE Mark and the Defendants’ Signs prior to the Claimant’s rebrand to Wise alone, and indeed, that rebrand took place after the relevant date for assessment of infringement. However, as I have already said, the lack of evidence of confusion is not determinative of whether there is a likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking account of all relevant factors. Confusion may be direct or indirect, as discussed in Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA. Looking at all of the factors I have discussed, as well as the manner of use of the Defendants’ Signs, I do not consider it likely that the average consumer would directly confuse the TRANSFERWISE Mark with the Defendants’ Signs, even allowing for imperfect recollection. The Mark/Signs are just too different. Moreover, given my finding as to the lack of reputation in Wise alone, and the Claimant’s own concerns about rebranding to Wise discussed above, it does not seem to me that there is a likelihood of indirect confusion either, on any of the bases suggested in Liverpool Gin. The Claimant did not identify any proper basis on which I might conclude that there is a likelihood of indirect confusion.The lack of any evidence of confusion between the parties whilst the Claimant was trading as TransferWise and the First Defendant as Wise, in contrast to the position after the Claimant began to trade as Wise, seems to me to support that conclusion. I therefore reject the claim to infringement of the TRANSFERWISE Mark pursuant to sub-section 10(2).

The Claimant also claimed infringement pursuant to subsection 10(3). It pleaded that the TRANSFERWISE Mark is a Mark with reputation and that by use of the Defendants’ Signs the Defendants have taken unfair advantage of or caused detriment to the distinctive character or repute of the Mark. It alleged that there was a serious likelihood that consumers would purchase the Defendants' goods or services on the strength and reputation of the TRANSFERWISE Mark and so took unfair advantage of it. The 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].” The Defendants 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 10(3) claim were denied.

The parties were agreed on the criteria necessary to prove such a claim. These were set out, for example, by Arnold LJ in Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5, [2025] F.S.R. 9. They are: (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.

The Claimant suggested that point (vii), the existence of a link, did not arise here because it was not specifically mentioned in the List of Issues appended to the CMC Order. I do not accept that the formulation of a List of Issues could or should preclude the Court from considering a point which is a condition of a finding of infringement, and which was live on the pleadings. Nor do I consider that the need to prove a link took the Claimant by surprise, as it dealt with the issue in its skeleton argument, as did the Defendants. The issues identified in the Defendants’ skeleton argument were:

It is not a high bar to prove a reputation for the purposes of section 10(3). All that is necessary is that a significant proportion of the relevant public know the mark in relation to the goods or services for which it is registered (or, in this case, for the sub-set of those goods/services for which a reputation is claimed). See, for instance, the analysis in Burgerista v Burgista Bros [2018] EWHC 35 (IPEC); [2018] ETMR 16. The size and scope of the mark’s reputation is relevant to the question of whether a link will be made in the mind of the average consumer giving rise to one of the three types of injury.

However, it is difficult to judge whether a significant proportion of the relevant public know a mark when the turnover figures are global and there is no evidence as to the Claimant’s market share in any of the services in which it claims a reputation. Moreover, the extent of the Claimant’s reputation in the TRANSFERWISE Mark must be considered as at the relevant date, which I have found primarily to be March 2020, or at the latest April 2021.

Mr Ballarini set out the history of the expansion of the Claimant’s business. Up to 2015 it seems to have been centred heavily on services of or related to the transfer of money from bank to bank, and then in 2016 it started to offer a business account which he said had, since at least 2019, been advertised as a good payroll solution, as mass or batch payments could be made through it. A debit card was launched in 2018. As I have said, it is not disputed that it has a reputation for services relating to the transfer of money. Whilst Mr Ballarini referred to the existence of the facility for making payment of invoices and said that service had been advertised from 2019 onwards, he gave no details about the scope of such advertising or the numbers of customers using that facility. The same problem arises in relation to the claim to reputation in relation to multicurrency prepaid accounts and debit cards. Mr Norris KC pointed out that Mr Weeresinghe’s evidence was that he was a long-standing customer of the Claimant, having dealt with it since 2013, long before he joined as an employee. Mr Weeresinghe said that he was familiar with the Claimant's business and knew it was good for sending money, but it was only when he joined the business in 2021 that he understood the "full feature set."

Doing the best I can, it does not seem to me that the Claimant has proved that it has a reputation in relation to payment of invoices, or software. The evidence is marginally better for multicurrency prepaid accounts and debit cards, and I bear in mind how closely those services would be linked to the Claimant’s apparently well-known services for money transfers, especially international money transfers. I conclude that the Claimant has proved a reputation in the TRANSFERWISE Mark for services relating to the transfer of money, multicurrency prepaid accounts and debit cards.

The next question is whether a link would be made between the TRANSFERWISE Mark and the Defendants’ Signs. The test was set out in Muzmatch (supra):

“56.

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] R.P.C. 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].”

For the same reasons that I have rejected the claim that use of the Defendants’ Signs would lead to a likelihood of confusion with the TRANSFERWISE Mark, I consider that the use of those Signs would not call the TRANSFERWISE Mark to the mind of the average consumer. An additional factor militating against a link being made is the difference between the Defendants’ goods/services and the services for which I have found the Mark to have a reputation. Again, the lack of any evidence of confusion between Mark and Signs prior to the relevant date(s) shows that no link would be made.

In case I am wrong about the lack of a link, I will consider whether use of the Defendants’ Signs may lead to the kinds of injury pleaded. I note, but do not need to set out in full, the CJEU decision in Intel Case C-252/07, [2008] ECR 1-8823, at paragraphs [29]-[32] and [62]-[78], and in particular:

“77.

It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the

economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.”

As to the claim to detriment to distinctive character, the Claimant appears to argue that damage will have arisen because of the importance of the TRANSFERWISE Mark to the rebrand to Wise. It suggests that confusion arising by reason of two companies trading under the name Wise, both having ‘Wise’ apps, will damage the reputation of the TRANSFERWISE Mark, and use of the Defendants’ Signs will weaken that Mark. I do not accept those arguments. The suggested forms of detriment seem to me to be fanciful and there is certainly no evidence to support this claim, as required following Intel. It may well be difficult to obtain such evidence, but at this stage, the claim to detriment appears to me to be wholly speculative. Nor is there any evidence to suggest tarnishment. The Claimant filed some evidence about phishing, but Mr Tuuling accepted that the Claimant’s initial concerns about phishing were misplaced.

The Claimant also alleges that the Defendants have taken unfair advantage of the reputation of the TRANSFERWISE Mark. It did not plead that they had any intention to take advantage, so that the only possible basis for a finding of unfair advantage would be that the objective effect of the Defendants’ acts is to take advantage of the Mark (see Jack Wills [2014] EWHC 11 (Ch); [2014] FSR 39 at [80].) I bear in mind that I have found that the Defendants do not offer transfer of money, multicurrency prepaid accounts and debit cards, nor do they offer a service of effecting payments, as opposed to facilitating the generation and payment of invoices by a third party. It is unclear, therefore, how the Defendants’ business could take advantage of the Claimant’s reputation when that reputation lies in services which the Defendants cannot offer and have not offered.

For all these reasons, I reject the claim of infringement of the TRANSFERWISE Mark pursuant to sub-section 10(3).

There was no dispute as to the nature of a claim for passing off. The classic trinity of elements of the action was summarised by Lord Oliver in Reckitt & Colman Products Ltd v Borden [1990] 1 WLR 491 (p 499D – H): goodwill, misrepresentation and damage. In Discount Outlet v Feel Good UK [2017] EWHC 1400 IPEC, [2017] ETMR 34, HHJ Melissa Clarke, sitting as a deputy Judge of the High Court, helpfully explained:

“55.

The elements necessary to reach a finding of passing off are the ‘classical trinity' of that tort as described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL), namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation. The burden is on the Claimants to satisfy me of all three limbs.

56.

In relation to deception, the court must assess whether "a substantial number" of the Claimants' customers or potential customers are deceived, but it is not necessary to show that all or even most of them are deceived (per Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501, [2013] FSR 21).

57.

The Defendant relies on The National Guild of Removers and Storers Limited v Bee Moved Limited, Nicholas Anthony Burns and Oliver Christopher Robert Sampson [2016] EWHC 3192 (IPEC) in which Douglas Campbell QC sitting as a deputy Judge of the High Court considered "… the difficulties of distinguishing between mere confusion, which is not enough to establish misrepresentation, and deception, which is" … . He concluded that: "The real distinction between the two lies in their causative effect, but is not a complete statement of the position… The more complete statement focuses on whether the conduct complained of is "really likely" to be damaging to the Claimant’s goodwill or divert trade from him. This emphasis on "really likely" echoes Lord Fraser in Advocaat [1980] RPC 31 at p 106 line 3. It is implicit in this test that if the conduct complained of is not "really likely" to be damaging then it will be mere confusion."”

The date for assessment of passing off is the date of commencement of the acts of which complaint is made or threatened, see Cadbury-Schweppes v Pub Squash Co [1981] 1 WLR 193, [1981] R.P.C. 429. The Claimant sought to persuade me that the right date was after it had effected its own rebrand to Wise. I reject that claim for the reasons discussed in paragraphs [53] ff. above.

The Claimant’s passing off claim is pleaded briefly and in rather general terms, but seems to relate back to the claim of a reputation in the name TRANSFERWISE and in the name Wise as part of the name TransferWise. For the same reasons that I consider there would be no likelihood of confusion between that Mark and the Defendants’ Signs, I conclude that use of the name Wise by the Defendants would not amount to a misrepresentation of a connection to TransferWise.

If the relevant date is April 2021 when the Defendant’s app was launched, rather than March 2020 when it started to trade, the Claimant’s difficulty is that it did not use the name Wise prior to its rebrand in March 2021 and I have already rejected the unsupported claim that a reputation was built up in Wise through use of TransferWise. Mr Ballarini explained how the rebrand was rolled out. It was announced on 22 February 2021 and customers were transferred to the new website from around 22 March 2021. At that date, for instance, the wise.com website stated, “We’ve changed our name to Wise.” Mr Ballarini said that people very quickly began to refer to the Claimant as “Wise” but in my judgment the Claimant has not proved that there was goodwill generated more or less instantaneously in the name Wise. It seems likely that it will have taken some time to re-educate customers. Certainly, in my view the Claimant did not provide sufficient evidence to prove that having made the substantive change only on 22 March, by April 2021 it had generated a significant or substantial goodwill in the Wise name.

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.

The Claimant’s passing off claim therefore fails.

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.

The Claimant pleaded in the Reply to the Counterclaim that the Defendants were disentitled from protection from passing off since their use of the Wise name was at all times unlawful as amounting to passing of and/or infringement of the Claimant's registered trade marks. This point was not pursued at the trial, because Mr Roberts KC accepted that the law was against him on this point, at least at first instance. He was referring to Inter Lotto v Camelot, [2003] EWCA Civ 1132, [2004] RPC 9, and Mr Norris KC referred me to the decision of Bacon J in easyGroup v Nuclei [2022] EWHC 901 (Ch) considering the same issue at paragraphs [192]-[198]. As the Claimant did not seek to pursue this point at trial, I will only refer to paragraph [196] of Bacon J’s judgment where she said,

“At its highest, therefore, the principle … is quite limited in scope, addressing situations where there has been serious wrongdoing such as a misrepresentation that involves dishonesty. That does not support the proposition that any act of passing off, without more, is liable to prevent a trader from acquiring goodwill.”

In this case, the only allegations were of trade mark infringement and passing off and no allegation of serious wrongdoing was pleaded or put.

The final issue relates to the First Defendant’s claim to invalidate the two Recent Marks on the basis of its earlier rights in the Wise name. It was common ground that the relevant date for that assessment is not the date of filing of those Marks, but the earlier date of the inception of use by the Claimant. It was agreed that this should be taken as February 2021. That was some 11 months after the First Defendant adopted the Wise name, but was prior to the launch of the Defendants’ app.

The Claimant took another pleading point about this part of the Counterclaim, as the Defendants had said that the claimed invalidity would apply if there was a likelihood of confusion between the Wise Logo Mark and the name Wise solus. I do not really follow why that would be the case, but as I have found such a likelihood of confusion, it seems to me that the pleading point goes nowhere. 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.

The parties did not address me as to the parts of the specifications of the Recent Marks which should be invalidated by reason of the First Defendant’s earlier rights. If the parties cannot agree on what terms should be excluded from the specifications of the Marks in the light of this judgment, then that is a matter on which I will need to have further submissions before settling the form of Order.

This judgment will be handed down remotely. If the parties are unable to agree the appropriate form of order, a hearing will be listed through the usual channels to resolve the Order, and the time for appeal will, if necessary, be extended to run from the date of that hearing.