Trade mark claim backfires spectacularly as Wise Payments is found liable for passing off

With Wise, which was represented by Fieldfisher in the matter, was founded in March 2020. The business launched 'Wise', an innovative platform which supports logistics businesses in the onboarding and management of self-employed contractors such as delivery drivers. The offering became an immediate breakout success over the subsequent months.

In February 2021, Transferwise, which was well-known as a leading money-transfer service, rebranded to become Wise Payments and later listed as Wise Plc. Confusion started to arise, including multiple instances where users being onboarded to With Wise's platform attempted to seek customer support from Wise Payments. In several cases, Wise Payments' staff told callers that With Wise was a scam or a phishing attempt.

Wise Payments attempted to force With Wise to rebrand, ultimately launching trade mark infringement proceedings in September 2022. Wise Payments claimed trade mark infringement of its TRANSFERWISE trade marks and of a sole, heavily stylised registration for a WISE Logo which it had filed in 2018. It also claimed passing off.

With Wise counterclaimed for invalidity in relation to the asserted trade marks and others, including a claim based on SkyKick bad faith that certain specification terms were overly broad. With Wise also counterclaimed that it was the earlier user of the WISE mark and had prior goodwill, such that it was Wise Payments who had passed off when it rebranded.

At trial it became clear that the history of confusion between the businesses had arisen largely in the wake of Wise Payments' rebrand. Wise Payments altered its case significantly at trial, dropping its claim that With Wise's core onboarding service infringed. Instead, it pursued a narrower claim arguing that the confusion had arisen as a result of With Wise altering its business model by expanding the functionality of its platform. In a colourful analogy, Wise Payments' counsel claimed that With Wise had "changed lanes into the path of the oncoming juggernaut".

In today's judgment, Recorder Amanda Michaels found that Wise Payments had failed in its claim for infringement of its TRANSFERWISE marks on the grounds that there was no likelihood of confusion with the defendant's WISE mark and no necessary 'link' for the purposes of section 10(3) Trade Marks Act 1994. Wise Payments also failed in its passing off claim on the grounds that use of WISE would not constitute a misrepresentation in connection to the historic TRANSFERWISE brand. 

Genuine use of the stylised WISE Logo mark was not at issue in these proceedings, although the right is subject to separate IPEC proceedings for revocation. The judge therefore treated the registration as an unused mark for the purpose of the infringement claim and reached a narrow finding of infringement. With Wise had infringed only in relation to the payroll and invoicing function within its platform. This was the only aspect of Wise Payments' claim which succeeded.

However, the sting in the tail came when the judge considered With Wise's counterclaim for passing off. The judge agreed that With Wise had established meaningful goodwill by the time that Transferwise rebranded to Wise in February 2021. As a result of its rebrand, Wise Payments had committed a damaging misrepresentation and was itself liable for passing off in respect of With Wise's established goodwill. The judge found that Wise Payments was liable in relation to its own payroll services, including arranging for payroll payments, and invoice services. 

The judgment serves as painful reminder to established businesses of the risks inherent in rebranding.  Even a 'juggernaut' like Wise Payments needs to check its mirrors before changing lanes and adopting a new name.

With Wise was represented by a Fieldfisher team led by Hastings Guise and including Fiona Waples, Matthew Palmer, Christopher Leung, Emily Neate, Haleema Punnu and Ali Zaghloul.