Was it wise to bring proceedings? Wise Payments v With Wise Ltd & ors: Judgment Analysis (11 July 2025)

Key Takeaways

• Effective due diligence is vital prior to any rebrand.
• Where clearance searches have been conducted, they need to be up to date if there is a gap between searching and filing.
• Courts continue to encourage trade mark applicants to draft their specifications with clarity and precision, rather than in general terms such as “software”.
• The lack of evidence of confusion is not fatal to a claim, but if the parties have coexisted for long periods without actual confusion, this may indicate there is no likelihood of confusion.
• In passing off cases, damage is not solely financial and can be reputational – statements to customers that With Wise was a scam by Wise Payments staff proved damage.
• IP disputes are unpredictable, complex and can be lengthy. The dispute began in 2022, brought by Wise Payments and ended in July 2025, when With Wise emerged partially successful in its counterclaim.

Summary of Decision

Wise Payments Ltd (“Wise Payments”), (formerly TransferWise Limited) brought proceedings against With Wise Ltd (“With Wise”) and its directors for trade mark infringement and passing off. The dispute centred around both parties’ use of the identical mark Wise, but allegations of infringement by Wise Payments related to their logo registration (the “Wise Logo”), and their earlier mark TRANSFERWISE (the “TW Mark”). With Wise in turn counterclaimed that Wise Payments were passing off their business as With Wise, and that Wise Payments’ trade marks were invalid for being registered in bad faith.

Recorder Amanda Michaels made a narrow finding of infringement of the Wise Logo (and no infringement of the TW Mark), but also found that for some services, Wise Payments was passing off as With Wise. In addition, the Wise Logo and TW Mark had their specifications amended by the court following the success of With Wise’s bad faith allegations.

Background and Issues for Trial

Wise Payments began as Exchange Solutions Ltd in 2010, rebranding to TransferWise in 2012 and later to Wise in 2021. Wise Payments is now a well-known, publicly listed, money transfer and additional financial services provider.

With Wise Limited (the First Defendant) was incorporated as Go Drive Trading Limited in December 2019, and rebranded as Wise in March 2020, and operates primarily in logistics software, including onboarding and payroll services for self-employed drivers.

Proceedings were first brought in 2022, but were stayed for ADR, which proved to be unsuccessful in resolving the dispute for the parties. Pleadings were amended and further parties were added to the claim, before the matter came before Recorder Amanda Michaels.

There were also separate proceedings brought by With Wise for revocation of the Wise Logo and TW Mark for non-use. With Wise had sought to amend the pleadings of this case to include this in the same proceedings but were denied permission and forced to bring separate proceedings subject to a different (possibly expedited) trial.

With Wise Bad Faith Revocation Claim

The Court considered With Wise’s bad faith claim first, given successful invalidity in this respect could affect Wise Payments’ trade mark infringement claims. A trade mark can be refused protection or removed (partially or wholly) from the register if it was applied for without a bona fide intention to use it for the goods or services designated.

This part of the decision applied the principles of the recent landmark decision of the Supreme Court in SkyKick UK Ltd & Anor v Sky Ltd & Ors [2024] UKSC 36, which was handed down after the counterclaim in this case had been filed (given proceedings were first brought in 2022).

Recorder Amanda Michaels set out the principles that apply from Skykick and highlighted those that were most relevant to this case. Where facts lead to a rebuttal of the presumption of good faith, it is up to the proprietor of the mark to show the application was made in good faith. The applicant does not need to know precisely the use that will be made of a mark at the time of application. However, if facts show it was made to undermine the interests of third parties, inconsistent with honest practices, this may indicate bad faith.

The bad faith claim against Class 36 specifications for financial services failed, as Wise Payments had broadened its financial services since applying for the mark. This meant that there was no rebuttal of the good faith presumption.

On the other hand, the Court agreed that the broad Class 9 specifications for “computer software” were not justified as there must have been sub-categories of software that Wise Payments had never had any intention of providing. The presumption of good faith having been overturned, Wise Payments failed to evidence any other justification for this broad and imprecise designation.

Class 9 for software was therefore amended to add limitations for the types of financial software Wise Payments provide.

Wise Payments Trade Mark Infringement Claim

Wise Payments made allegations of trade mark infringement against With Wise for their use of the “Wise” signs, either in word form or in stylised logo form (the “WW Signs”). These were two-fold; firstly that use of the WW Signs caused a likelihood of confusion, and secondly that it caused detriment or took unfair advantage of Wise’s reputation in the TW Mark.

The court found medium-high similarity between the Wise Logo and the WW Signs as the dominant part of the Wise Logo was the word element “Wise”. Recorder Michaels also found there was similarity in respect of “payroll services” when compared with the “financial affairs” under the Wise Logo.

As to likelihood of confusion, evidence showed various instances of members of the public contacting one of the parties thinking it was the other. However, Recorder Michaels could not pinpoint the root cause of such confusion, and whether customers were familiar with the Wise Logo (for the purpose of this infringement assessment).

That said, in trade mark cases, the lack of evidence of actual confusion is not fatal to the claim (as only a likelihood is required). The evidence submitted did show that the two parties clearly shared some customers, and as such, it was found that there was direct confusion between the Wise Logo and the WW Signs, in respect of payroll services.

In relation to the TW Mark, the court held that the “Transfer” word element had a significant impact on the comparison such that similarity was low, whilst similarity in the goods and services remained the same. Recorder Michaels found that there was no likelihood of confusion. Even the alleged instances of real confusion had only occurred after Wise Payments had rebranded from TransferWise (even if this is not conclusive, it is indicative of no likelihood of confusion).

Finally, turning to the reputational trade mark infringement claim brought by Wise Payments, the Claimant did have a reputation in the TW Mark. However, Recorder Michaels found (for the same reasons as in relation to a likelihood of confusion) that there would be no link in the minds of the average consumer between the marks. Further, there was no discernible detriment to the TW Mark, or unfair advantage taken by With Wise, given they did not offer comparable services.

Wise Payments Passing Off Claim

The Court had found that Wise did have goodwill in TRANSFERWISE. However, for the same reasons as with likelihood of confusion relating to TRANSFERWISE, there was no misrepresentation on With Wise’s part. That passing off claim failed.

In relation to the “Wise” sign, Wise Payments rebranded to this sign in April 2021, but by this time, With Wise had been using that sign for around a year, and were the senior user of that mark.

With Wise Passing Off Claim

February 2021 was the relevant date for assessing this claim, given this is when Wise Payments announced its intention to rebrand from TransferWise to Wise. By this time, With Wise were turning over hundreds of thousands in turnover per month and had a customer base, proving they had goodwill.

Wise Payments began offering some payroll services by that time and therefore could have caused some confusion, even if the parties’ overall businesses are quite different. This misrepresentation could lead to the public to believe there was a connection between the two parties.

Whilst goodwill and misrepresentation had been established, a likelihood of damage (the third requirement for a successful passing off claim) was less straightforward. Wise Payments and With Wise were not in direct competition, meaning sales may not be diverted. However, damage in passing off can be in forms other than directly diverted trade, including damage to trust and reputation.

Evidence showed that in instances of confusion, where a customer had contacted Wise Payments’ customer service thinking it was With Wise, they had been told the communications were scams or phishing attempts. This could erode customer trust and With Wise’s reputation.

With Wise was therefore successful in establishing passing off by Wise Payments, in relation to payroll and invoice services. This also meant that the Wise Logo was partially invalid, in respect of those services, as With Wise had a valid prior right.

Conclusion

This is a nuanced decision with wins of varying significance on both sides. The case raised interesting points on matters such as trade mark specifications, the likelihood of confusion test, and damage in passing off, amongst others. A key takeaway for businesses is that they must be thorough in their due diligence prior to adopting any new brand, whether a rebrand or not.

Wise Payments conducted some due diligence in 2019 when first brainstorming the rebrand. However, they failed to do any further searches before they began using the mark in 2021. With Wise had entered the market in the interim. On the other hand, by the time With Wise had entered the market, Wise Payments had filed for the Wise Logo. Had With Wise conducted a trade mark search, they may have encountered it.

Ultimately, it would seem it was the confused customers calling either party that seem to have sparked the dispute. The rate of this seems to have increased upon Wise Payments’ rebrand and worsened when both parties released mobile apps with the same name.

If your business is going through a rebrand, or you have found a third party using a similar brand, our experts can guide you in mitigating risks and protecting your brand, please contact Lakmal Walawage or any member of the Intellectual Property team.