Trade mark confusion in the fintech sector: Wise partly loses its claim over ‘With Wise’ branding

A recent decision from the IPEC sheds light on how courts assess trade mark infringement and passing off where competing businesses operate in overlapping financial and technology markets. In WISE Payments Ltd v With Wise Ltd & Ors [2025] EWHC 1722 (IPEC), HHJ Amanda Michaels handed down a split decision: while the court found trade mark infringement in relation to one of Wise’s logo marks due to a likelihood of confusion, the majority of its claims (including under section 10(3) and for passing off) were dismissed. The defendants succeeded on a partial passing off counterclaim and in a bid to invalidate parts of Wise’s more recent trade mark registrations based on bad faith - by applying the recent Supreme Court decision in SkyKick.

Background

Wise Payments Ltd (formerly TransferWise) is well known for international money transfers and related financial services. The business rebranded to “Wise” in early 2021 and owns a portfolio of UK trade marks, including word and logo marks for “Wise” and “TransferWise”.

The defendants, With Wise Ltd and two of its directors, had been using the name “Wise” since 2020 for a financial wellbeing platform, including payroll tools and invoice management. Their brand appeared as “With Wise” or simply “Wise”, including within an app. Wise brought claims under sections 10(2) and 10(3) of the Trade Marks Act 1994 and for passing off. The defendants counterclaimed for passing off and partial invalidity of certain marks.

Likelihood of confusion: logo mark infringement succeeds

The court rejected Wise’s infringement claim under section 10(2) in relation to the TRANSFERWISE mark. HHJ Michaels concluded that the TransferWise mark and the defendants’ branding were “just too different” for confusion to be likely, and that there was no evidence of direct or indirect confusion.

However, the position was different in relation to the Wise Logo Mark. The judge considered that even without substantial evidence of actual confusion, there was a likelihood of direct confusion between the Wise Logo Mark and the defendants’ use of “Wise” on their app and materials, particularly where services were identical or similar.

Key to this conclusion were:

• The medium-high degree of similarity between the Wise Logo Mark and the defendants’ signs (especially “Wise” used on its own)

• The fact that both parties offered similar financial services

• The mobile app context, where consumers might view branding on small screens with limited attention

• The potential for imperfect recollection by consumers

The court accepted that even if the mark had seen no use, it remained validly registered and was entitled to protection in this context. While actual confusion evidence was not determinative, the court found that confusion was still likely.

No reputation-based infringement or unfair advantage

Wise’s claim under section 10(3) was dismissed. Although Wise had a reputation in the TRANSFERWISE mark for money transfers and related services, the court held that the average consumer would not make a mental link between that mark and the defendants’ branding.

Further, the defendants were not offering the same types of services (such as money transfers or multicurrency cards). As a result, there could be no unfair advantage or detriment under section 10(3). The judge rejected the suggestion that the presence of two “Wise” apps would damage the TRANSFERWISE mark as “fanciful” and unsupported by evidence.

Passing off claims succeed (for the defendants)

Wise’s own passing off claim failed. The court found that by the time of Wise’s rebrand in 2021, the defendants had already established goodwill in the “Wise” name in relation to their own services. As such, Wise could not claim exclusive rights in the “Wise” name at that point.

In contrast, the defendants’ counterclaim for passing off succeeded. The judge held that the claimant’s later use of the “Wise” name in relation to payroll and invoice services interfered with the goodwill that the defendants had already built. The court found that the claimant’s expansion into these areas was likely to cause misrepresentation and damage to the defendants’ established business.

Bad faith and the impact of the

SkyKick judgment

One of the more technical aspects of the case was the defendants’ partial invalidity claim, which relied on the Supreme Court’s landmark ruling in SkyKick UK Ltd v Sky Ltd [2024] UKSC 36. That decision clarified the test for bad faith in trade mark filings, particularly where overly broad or vague terms are used in specifications.

Drawing on SkyKick, the judge in this case considered whether Wise’s applications, particularly for “computer software” and other broad Class 9 terms, had been made without genuine intention to use the mark across the full range of goods. The Supreme Court had emphasised that such applications may be found to be in bad faith if they represent an abuse of the trade mark system and lack a clear commercial logic.

The court accepted that Wise had not provided a satisfactory explanation for its inclusion of extremely broad terms such as “computer software” and “application software”. Although Wise’s business used and developed software, it was not in the business of selling software products across a broad market. There was insufficient evidence that it had ever intended to use the mark in relation to all sub-categories of software. As a result, the court found bad faith in part, specifically in relation to Class 9 of the 2018 marks.

The Class 36 specifications (covering financial services) were also broad, but the court took a more generous view here, noting that Wise had reasonably expanded its business in this space. There was no sufficient inference of bad faith to shift the burden of proof to Wise for those terms.

The outcome was a reduction in the Class 9 specifications, with new wording reflecting a more precise and commercially justified range of services closely tied to Wise’s actual and foreseeable business activities.

This decision shows that SkyKick has real bite. Overly broad trade mark filings, particularly for generic terms like “software”, are now more vulnerable to partial invalidity, and applicants may be expected to justify their filing strategy, especially in litigation.

What does this mean?

This case is a valuable reminder of the nuance in trade mark and passing off disputes. A single portfolio can yield very different outcomes depending on the specific mark and the context of use. Wise succeeded on a traditional confusion-based infringement claim relating to its logo mark, but failed to establish a reputation-based infringement or enforce unregistered rights through passing off.

It also shows that prior users, even small companies, can successfully defend their positions if they can demonstrate goodwill and senior use in a specific market segment.

The judgment also confirms the practical consequences of SkyKick. Overly broad and vague trade mark specifications, especially for software, are now far more vulnerable to challenge on bad faith grounds. Applicants must take care to ensure their specifications reflect genuine commercial plans and be prepared to justify them if questioned.

It seems a shame that the parties could not reach a commercial resolution before trial, especially given the partial wins on both sides and the expense of proceedings. Nonetheless, the decision highlights the value of precision in pleadings, early brand clearance, and understanding the real-world scope of brand overlap.

To find out more about the issues raised in this blog contact Rosie Burbidge.