Wise Payments v With Wise: Court applies SkyKick in score-draw infringement claim

Last week a decision was handed down in WISE Payments Ltd v With Wise Ltd & Ors [2025] EWHC 1722 (IPEC). The case is interesting for a number of reasons, including that the judge applied the well-known Supreme Court judgment of SkyKick [2024] UKSC 36 to declare that the Claimant’s trade marks were partially applied for in bad faith. The Claimant (WISE Payments Ltd) was partially successful on its claim, but the Defendants (With Wise Ltd and three directors) was partially successful in their passing off counterclaim.

It is difficult to assess from the judgment who was the overall winner, if anyone. The Claimant was successful in its claim for infringement in respect of the Defendants' payroll services, while the Defendants were successful in their passing off claim in relation to the Claimant’s payroll and invoicing services. It therefore seems that both have been simultaneously infringing each other’s rights. This clash between registered trade mark rights and passing off, outside of the situation of a relative rights challenge to validity under s.5(4) of the Trade Marks Act 1994 (TMA), was a possibility foreseen at the time the Trade Marks Act 1994 (TMA) was enacted (see s.2(2)) and considered in Inter Lotto v Camelot [2003] EWCA Civ 1132. It is, however, an unusual conclusion to a claim. If this were a knock-out football match, it would go to penalties, but this English Kat would prefer not to think about that possibility.

Disclosure issues

While the trial was fairly complex and ended up lasting three days, the case was heard in the IPEC. This meant that it was subject to the particularly strict rules on admitting documents after the timetabled time for doing so.

The Claimant had sought to introduce 23 additional documents after the exchange of witness evidence. It gave no ‘exceptional reasons’ (CPR 63.23) for doing so, and did not seek permission to adduce the documents, saying simply that it planned to include them in the trial bundle. The Defendants applied for an order that the documents were not to be admitted.

Having concluded that the Claimant had failed to make out that there were exceptional reasons for adducing those documents, the judge (Recorder Amanda Michaels) refused to admit them.

Further, two days before trial, and as is quite common in practice, the Claimant served a small bundle of five further documents which it intended to use in cross-examination of the Defendants’ witnesses. The judge allowed two of those to be admitted, as they applied to “very central points” and were only three pages in length, but excluded the others.

Counterclaim for invalidity

Following the order of the judgment, we start with invalidity.

The Defendants counterclaimed that the Wise figurative mark and the TRANSFERWISE word mark were registered in bad faith, and should be partially invalidated due to their breadth. They included the 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.

The Defendants relied on SkyKick to show that the categories of computer software and financial services in particular, were overly broad and were an attempt to abuse the trade mark system to obtain a legal weapon with which to prevent third parties using identical/similar signs. 

The judge, in an admirably concise eight paragraphs, summarised the SkyKick proceedings. She then found that the Defendants had not raised an inference that the Class 36 services were applied for in bad faith. While the judge did consider that some of the terms were “broad and imprecise”, she decided “with some hesitation” that the Defendants had not raised an inference that the impugned parts of the Class 36 services were applied for in bad faith. The Claimants did not have to adduce evidence of their trade mark filing strategy and the specification therefore stood.

However, the judge did find that the Defendants had raised an inference that the terms computer software; application software were applied for in bad faith. She found that the Claimants had “completely failed” to justify its trade mark applications, and decided that those terms needed to be removed from the Class 36 specification, with an amendment drafted that still maintained adequate and consistent protection. That amendment is instructive:

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

 

The Claimant’s infringement and passing off claim

After some pleading issues, the judge concluded that the claim was in relation to allegations that the Defendant offered payment and invoicing services and payroll services. It appears, though, that the real trigger for the Claimant bringing the claim was the offering of payment and invoicing services.

The Defendants’ marketing perhaps overstated the offering on payments, and while the judge found that the Defendants had offered payment services, they had not in fact provided them. They had though provided payroll services, and those services were identical to the financial affairs of the specification. Similarly, the judge found that the software enabling invoicing was identical to the Claimant’s (amended) Class 9 specification, and in the non-downloadable form, similar to those services.

Likelihood of confusion

This claim was brought under s.10(2) of the TMA. The Claimant could rely on evidence of actual confusion, namely emails, recorded voice calls and other communications. There was a peculiarity in this case as to the timing of the uses of the marks and the signs, notably that the Claimants had rebranded from TRANSFERWISE to Wise at a similar time to the Defendants began trading as Wise, and that coincided with the increase in evidence of confusion.

The judge, having gone through the evidence of confusion between the Claimant’s Wise Logo and the Defendants’ stylised WISE signs with a fine-tooth comb, placed little reliance on it. She nevertheless found a likelihood of confusion in relation to the identical and similar services, i.e. the Defendant’s payroll and invoicing services. She found no likelihood of confusion between the Claimants’ TRANSFERWISE mark and the Defendants’ WISE signs, considering them “just too different”.

Unfair advantage etc.

While the Claimant’s business was undoubtedly significant, and the Defendants accepted that the Claimant’s marks had a reputation for the transfer of money, the judge rejected the claim to having a reputation for the payment of invoices or software. She found, however, that the Claimant also had a reputation for multicurrency pre-paid accounts and debit cards.

The judge rejected the s.10(3) claim on the basis that consumers would not perceive a link between the TRANSFERWISE mark and the Defendant’s WISE signs, and that if she was wrong on that, then also rejected the detriment and unfair advantage claims. She rejected the detriment claim as “fanciful”, and found that there was no unfair advantage where the “the Claimant’s reputation … lies in services which the Defendants cannot offer and have not offered.”

Passing off

The key to the Claimant’s passing off claim was whether its goodwill in the ‘TransferWise’ business had carried across to its business under ‘Wise’ solus. Given the short period between the rebrand, and the commencement of the claim, the judge considered that there was insufficient evidence of that transfer. She therefore rejected the passing off claim.

Defendants’ passing off counterclaim

The judge found that the Defendants had acquired goodwill in relation to its driver onboarding business, and associated payments services, by the relevant date (being the date of the Claimant’s rebrand).

The Defendants also relied on the evidence of confusion. However, the judge found that those instances did not clearly indicate the source of the confusion. She suspected that “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…”. She found that the Claimant’s use of WISE in relation to payroll and payroll payment services would give rise to a misrepresentation, but not the Claimant’s wider business.

While the damage element of passing off typically flows almost automatically, the judge found that in this case it did not. In particular, the diversion of trade argument was rejected. However, the emails from the Claimant’s customer services team suggesting that the Defendants’ business was a “scam” (a common and often justified word in the payments industry, but not apt for the Defendant’s business) were found to damage the Defendants’ goodwill. The counterclaim for passing off therefore partially succeeded in relation to the Claimant’s “payroll services (including arranging for payroll payments) and invoice services”.

Comment

Practitioners have generally agreed that SkyKick will lead to a change in filing practice, and possibly some additional scrutiny at examination stage (see the UKIPO’s 27 June 2025 Practice Amendment Note 1/25), but that the bulk of the effect of the UKSC decision will be felt in infringement proceedings. That sense has been proven to be well-founded in this case, where the category term computer software was narrowed down to that software which it may have a reasonable expectation or intention of providing at the filing date.

Owners of marks registered in respect of financial services will be relieved to see that the same decision was not reached on that category. While the judge felt it was broad and imprecise, it did not give rise to the same inference of bad faith in the circumstances.

Reading between the lines though, the judge appeared to feel that this case should have been resolved commercially. In particular, she referred to it being “unfortunate” both that the parties did not, respectively, refresh or conduct clearance searches, and also that no settlement emerged following a stay of proceedings. The result - limited wins on both sides - could sensibly have been avoided in a co-existence agreement, but for whatever reason was not. Instead, the court has imposed one of sorts.

Note: This Kat, in his private practice, represented the defendant in a case that went to trial in June – and in respect of which judgment is awaited – Dryrobe v D-Robe. That case gives rise to some similar issues (mainly the relevance of evidence of confusion). The above note is intended to be impartial, but the interest is declared for the purpose of transparency.