Wise Payments Limited vs With Wise Limited

This case involved an application by Wise Payments Limited to add new parties as counterclaim defendants in a trade mark and passing off dispute against With Wise Limited and others.

TLDR:

• Wise Payments Limited (formerly TransferWise Limited) filed a lawsuit against With Wise Limited and others for trade mark infringement and passing off.
• The defendants counterclaimed, arguing that the claimant's trademarks were invalid and sought to add additional parties to the counterclaim.
• The court allowed the addition of some parties but dismissed the application to add Dean Nash.

The claimant, Wise Payments Limited, was incorporated in March 2010 and traded under the name TransferWise until February 2021, when it rebranded to Wise. The claimant's business involves facilitating global money transfers using technology to make the process simpler and more cost-effective. The claimant alleged that the defendants, With Wise Limited and its directors, infringed its trademarks and engaged in passing off by using the name 'Wise' and similar logos.

The defendants, With Wise Limited, argued that their use of the name 'Wise' did not involve technology to make payments automatically or effect money transfers. They contended that the claimant's trademarks were invalid and that their goodwill in the word 'Wise' predated the claimant's rebranding. The defendants counterclaimed for passing off, asserting that the claimant's rebrand and subsequent use of 'Wise' amounted to infringement.

The first defendant sought to join four additional parties to the counterclaim, including Wise plc, the claimant's co-founders Kristo Käärmann and Taavet Hinrikus, and former General Counsel Dean Nash. Wise plc consented to be joined, but the claimant and the other proposed parties resisted the application on grounds of case management and proportionality.

The court reviewed the facts and evidence presented by both parties. The first defendant argued that the proposed new parties were liable for the claimant's decision to rebrand and the consequent acts of passing off. The claimant and the proposed parties contested this, particularly focusing on the potential impact and cost-benefit implications of joining the new parties.

Deputy Judge Treacy assessed the application under CPR 20.5 and CPR 19.2(2), considering whether the case against the new parties had a real prospect of success and whether the likely benefit justified the costs. The court allowed the addition of Kristo Käärmann and Taavet Hinrikus, finding that their inclusion could be managed within the IPEC's case management framework. However, the court dismissed the application to add Dean Nash, concluding that the evidence against him was insufficient to establish a good arguable case of joint tortfeasorship and that the cost-benefit considerations weighed against his inclusion.

The court emphasized the importance of balancing the interests of justice, cost management, and procedural efficiency in IPEC cases. It highlighted the need for careful case management to ensure that the addition of new parties did not unduly complicate or prolong the proceedings.

Legal representatives: Iona Berkeley (instructed by Foot Anstey LLP) for the claimant. Daniel Selmi (instructed by Field Fisher LLP) for the defendants.

Judicial Panel: Ms. Pat Treacy (sitting as a judge of the Chancery Division)

Case Citation Reference: [2024] EWHC 234 (IPEC)