The recent UK decision in Wise Payments Ltd v With Wise Ltd & Others (2025, IPEC[1]) provides an important illustration of how the courts are applying the SkyKick[2] principles on bad-faith trade mark filings, the complexities of enforcing broad digital-era brands, and the risks associated with rebranding without proper due diligence.

Wise Payments Ltd (formerly TransferWise Limited) brought proceedings against With Wise Ltd, a smaller company offering payroll and driver-onboarding software, alleging trade mark infringement and passing off. With Wise counterclaimed, arguing that Wise Payments’ marks were partially filed in bad faith due to the breadth of the specification, and that Wise Payments itself was guilty of passing off when it rebranded to “Wise” in 2021.

 

The Background

Wise Ltd was founded in March 2020 and launched “Wise”, an innovative computer platform designed to help logistics companies onboard and manage self-employed contractors, such as delivery drivers. The platform became a rapid success in the months that followed.

Then in February 2021, TransferWise, a well-known money transfer service, rebranded as Wise Payments and later became listed as Wise Plc. This change led to growing confusion, with multiple instances of users onboarded to With Wise’s platform mistakenly contacting Wise Payments for customer support. In several cases, staff at Wise Payments reportedly informed callers that With Wise was a scam or phishing attempt.

 

The Decision

The court’s findings were mixed. Wise Payments’ registration covering “computer software” (Class 9) was found partially invalid because the specification was overly broad – a clear application of the SkyKick decision. However, its Class 36 registration for financial services was upheld as legitimate given Wise Payments’ commercial expansion.

On infringement, the court ruled that With Wise’s use of its brand did not infringe the TRANSFERWISE mark, as the word “Transfer” distinguished the two. However, there was limited infringement of the stylised Wise logo for overlapping payroll and invoicing services.

Both sides also brought passing-off claims. Wise Payments’ claim failed: it could not show sufficient goodwill in all relevant services at the material date. By contrast, With Wise succeeded in its counterclaim — the court found it had established prior goodwill in its business, and that Wise Payments’ rebranding and conduct (including telling customers that With Wise was a “scam”) amounted to misrepresentation.

In the end, the judgment serves as a warning that even major brands must ensure their trade mark specifications are not overly broad and match the genuine commercial scope, that rebranding without proper due diligence carries real risk, and that enforcement action can backfire if the opponent has established goodwill of its own. It also underscores the courts’ willingness post-SkyKick to prune overly broad specifications to balance trade mark rights with real-world market use.

 

For further information on the above or if you simply need some trade mark advice of your own, please contact Kirsten Coetzee, trade mark attorney, Scintilla IP.

 

[1] https://www.bailii.org/ew/cases/EWHC/IPEC/2025/1722.html

[2] https://supremecourt.uk/uploads/uksc_2021_0181_judgment_updated_3_Dec2024_eaf8c576ea.pdf