With Wise Limited v Wise Payments Limited

This judgment relates to an application for the costs of an abandoned application to be paid off the IPEC scale.

On 23 September 2022, the Defendant in these proceedings (which I shall call "Wise Payments" for clarity) issued proceedings against the Claimant in these proceedings (which I shall call "With Wise"). I will refer to the earlier proceedings as "the 2022 Proceedings" and to the current proceedings as "the 2024 Proceedings."

In the 2022 Proceedings, Wise Payments alleged that With Wise had infringed two of its trade marks and passed off its business as connected with that of Wise Payments, by the use of the name Wise and stylised versions of it. One of the two registered marks upon which it relied was UK Trade Mark Number 3346396 (“the “Wise Logo Mark”). The application for that Mark was filed on 17 October 2018 and the registration was completed on 1 March 2019. Hence, it became vulnerable to a non-use challenge on 1 March 2024.

With Wise denied those claims and made various counterclaims, such as alleging partial invalidity of both of the marks relied upon.

After some delay, during which the parties unsuccessfully pursued a mediation, a CMC was held in the 2022 Proceedings on 15 January 2024.

On 2 October 2024, With Wise’s solicitors wrote to Wise Payments’ solicitors, stating that their investigations showed that the Wise Logo Mark had not been put to genuine use. They invited Wise Payments to surrender the Mark voluntarily. Not surprisingly, that did not happen. On 22 October 2024, With Wise served a draft Re-Amended Defence and Counterclaim in the 2022 Proceedings to include a revocation claim and invited Wise Payments to consent to the amendment. It did not do so, and on 13 November 2024 With Wise made an application to amend. Both sides filed evidence and skeleton arguments relating to the application.

HHJ Hacon heard the application to amend on 13 December 2024. He heard counsel for With Wise, and delivered an extempore judgment without calling upon counsel for Wise Payments. The neutral citation number for the judgment is [2024] EWHC 3448 (IPEC). The first issue dealt with by HHJ Hacon was With Wise’s delay in raising the allegation of non-use. Whilst he accepted that raising the point earlier than five years after completion of the registration process would have been problematic, he did not consider that With Wise had given satisfactory reasons for not raising the new allegation promptly after 1 March 2024:

“18 …in my view, a satisfactory reason for not raising a new allegation by the time of the CMC does not exonerate a party from raising it promptly, as soon as that can reasonably be done, and indeed making an application to amend shortly thereafter.

The reason given by the defendants as to why the allegation of non-use was not raised shortly after 1st March 2024, and indeed not until seven months later, on 2nd October 2024, is that it would have been inappropriate to derail without prejudice negotiations, and mediation, which happened in that period. I do not accept that as a good reason. The point could have been raised in a manner emphasising that the defendants had no intention of antagonising relations between the parties, but that, in fairness, they were obliged to raise the allegation of non-use promptly, and that is why it was being done. The parties could, thereafter, have discussed and resolved whether a formal application should be made at that stage, or better left until after resolution of negotiations in the mediation. However, this is not the most serious difficulty facing the defendants’ application.”

He went on to express concerns (reflecting points raised in Wise Payments’ skeleton argument) that, if allowed, the amendment to allege non-use might overload the trial which had been fixed for May 2025. He was also unsure that the application met the cost/benefit test which applies in IPEC, which would depend on the outcome of the trial in the 2022 Proceedings. It appears that in the course of argument counsel for With Wise had said that if the amendment were not permitted his clients would be required to issue a freestanding claim to revoke the mark. HHJ Hacon commented “That would be your right …”. Following up on that point, at paragraphs 21-22 of his judgment, the learned judge said:

“21.

I am also not convinced that allowing the amendment would satisfy the cost/benefit test that applies in this court. There is nothing to stop the defendants from starting a new action for revocation of the [Wise Logo] Mark for non-use. In due course this court may or may not be sympathetic to an application for an expedited trial. At the conclusion of the trial in May, it may turn out that the allegation of non-use is of no practical benefit to the defendants. The [Wise Logo] Mark may be revoked. Alternatively, it may not be infringed. Alternatively, there may be a finding that there is to be an injunction for infringement of the Second Mark so that revocation of the [Wise Logo] Mark would not, in practice, make any difference to the ability of the defendants to trade. There may be other permutations I have not thought of, which would, in practice, make the allegation of non-use of the [Wise Logo] Mark of no real practical benefit to the defendants.

22.

On the other hand, if, after the trial in May, the issue of non-use of the [Wise Logo] Mark could be of practical effect, the defendants would be entitled to apply to the court for a stay of any injunction and/or other relief sought, and, given all the circumstances including the findings in the judgment, the trial judge may or may not think that a stay is appropriate. Of course, I am not suggesting now one way or the other whether it would be appropriate, only that the potential benefit to the defendants of adding the allegation of non-use at this stage could turn out to be non-existent, and, even if that is not the case, it may be limited.” (emphasis added)

HHJ Hacon accordingly refused With Wise permission to amend.

With Wise therefore issued a claim form on 19 December 2024 seeking a declaration that the Wise Logo Mark had not been put genuine use. The date for service of the Defence was fixed for 3 March 2025. On that day, Wise Payments' solicitors served an application seeking to strike out the 2024 Proceedings as an abuse of process. The application was supported by a witness statement of its solicitor Mr Grist. He said that the grounds for seeking to strike out were, in sum:

“35.

… Wise Payments now finds itself vexed not twice but thrice with a proliferation of proceedings brought by With Wise. It is Wise Payments’ position that the [2024 Proceedings are] an abuse of process and violates the rule in Henderson v Henderson.

36.

First, the [2024 Proceedings] could have been raised far earlier. …

37.

The bringing of the [2024 Proceedings] at this point in time is an abuse of process, causing unjust oppression to Wise Payments. The prejudice caused to Wise Payments by the [2024 Proceedings] can be seen by contrasting the possible outcomes with and without the [2024 Proceedings] in play.”

With Wise filed a witness statement of its solicitor Mr Guise in response to the strike out application. It also applied for expedition of the trial of the 2024 Proceedings. Both applications were listed to be heard on 14 July 2025.

In mid-May 2025 I heard the trial of the 2022 Proceedings and reserved judgment. I circulated a draft judgment to the parties on 7 July 2025. In that judgment, I found inter alia that With Wise had infringed the Wise Logo Mark.

On 8 July 2025, Wise Payments’ solicitors wrote to With Wise’s solicitors saying,

“Having had sight of the draft judgment, our client no longer intends to pursue its strike out application in relation to the Second Action. Should your client wish to pursue the Second Action in the light of the draft judgment we regard it as preferable to resolve the Second Action as a whole with certainty on an expedited timetable, rather than risk the overall delay of procedural appeal(s).”

As the strike out application had been withdrawn, the only point on which I was asked to rule on 14 July was as to the costs of that application. With Wise sought to displace the normal Order and recover its off-scale costs incurred in relation to the strike out application. It submitted that the events set out above showed that Wise Payments’ application had been launched as a delaying tactic, and that the application was utterly hopeless. Mr Norris KC referred me to the comments of HHJ Hacon in Costa v Dissociadid Ltd [2023] EWHC 49 (IPEC) at [30] and the following passage from the judgment of Mr John Kimbell KC in Photobooth v Nepbh [2022] EWHC 1634 (IPEC):

“24.

As to Link UP Mitaka Limited trading as Thebigword v Language Empire Limited, Yasar Zaman [2018] EWHC 2728 (IPEC) , I accept the submission that this case draws a distinction between the "truly exceptional circumstances" required to lift the overall scale costs and mere "unreasonable conduct" which is sufficient to justify the lifting of the cap for one or more stages of the claim.

25.

I have considered the summary of the case law on unreasonable conduct in relation to applications for the purposes of CPR 63.26(2) as summarized in paragraphs 9 – 059 – 9-061 of Fox, The Intellectual Property Enterprise Court: Practice and Procedure (3rd edition 2021). It is it seems to me possible to distil the following four points:

a.

The mere fact that an application fails is not in and of itself evidence that the applicant was unreasonable to bring it.

b.

The bringing of a truly groundless application may amount to unreasonable conduct.

c.

"Unreasonable conduct" under r.63.26(2) is not concerned with the behaviour or attitude of the parties generally, but rather with their behaviour in and towards the process of the court.

d.

Behaviour that only forms part of the general "cut and thrust" of litigation is unlikely to be regarded as unreasonable for the purposes of r.63.26(2).”

Wise Payments said that the costs of the application should be reserved to the conclusion of the trial of the 2024 Proceedings, in the usual manner in IPEC. It denied that the application had been made unreasonably and suggested that any manoeuvring had been no more than the general cut and thrust of this hard-fought litigation.

Mr Roberts KC said that in the light of the judgment in the 2022 Proceedings, and Wise Payments’ success only on the basis of the Wise Logo Mark, the 2024 Proceedings were of real importance to both sides. Hence, he said, his client considered that the better course was to move to an expedited trial of the 2024 Proceedings, rather than risk the additional delay which would be caused by any pre-trial appeal of the result of the strike out application.

In addition, in its skeleton argument, Wise Payments had said that it had not abandoned the abuse of process point along with the strike out application but intended to raise it again in its Defence. This was not a point emphasised by Mr Roberts KC in oral argument on 14 July, but it does seem to me to raise a difficulty in dealing with the costs of the application at this point. Any finding on costs would inevitably comment on the substantive merits of the strike out application and might pre-empt the parties’ arguments at trial, assuming that Wise Payments does, in fact, raise the abuse of process point as part of its Defence.

In the circumstances, whilst I have sympathy for With Wise’s position, I have decided that the question of the appropriate order for costs to be made following abandonment of Wise Payments’ strike out application should be reserved until after trial. With Wise has permission to raise its claim for off-scale costs at that point. The arguments which I heard on 14 July can be ‘banked’ in the form of the skeleton arguments for and transcript of that hearing.

The parties should draft an Order for approval dealing with this point and with the directions given in relation to the application for an expedited trial.