Wise Payments Limited vs With Wise Limited and others

Background of the Case

The case of Wise Payments Limited vs With Wise Limited and others was heard in the Intellectual Property Enterprise Court, presided over by His Honour Judge Hacon. The dispute centred around allegations of trade mark infringement and passing off, with the claimant, Wise Payments Limited, asserting that the defendants had infringed upon two of its registered trade marks.

The Claims and Counterclaims

Wise Payments Limited, formerly known as TransferWise Limited, initiated the claim in September 2022. The proceedings, however, experienced delays due to attempts at mediation and settlement negotiations, which ultimately proved unsuccessful. The claimant argued that the defendants had used signs that infringed on its trade marks and had passed off their goods and services as those of the claimant.

In response, the defendants counterclaimed, alleging that the claimant had itself engaged in passing off and that its trade marks were invalidly registered on grounds of bad faith under section 3(6) of the Trade Marks Act 1994. They further contended that the claimant's trade marks were invalid under sections 47(2)(b) and 5(4)(a) of the same Act.

The Application to Amend

The defendants sought to amend their defence and counterclaim to introduce an additional ground for revocation of one of the claimant's trade marks, known as the Rectangle Mark, citing non-use under section 46(1)(a) of the Trade Marks Act 1994. This application was made after the case management conference and was intended to be included in the issues for trial.

Judge Hacon's Ruling

Judge Hacon dismissed the application to amend, citing several reasons. Firstly, he noted that the defendants could have raised the issue of non-use earlier, particularly during the case management conference. The delay in raising the issue, attributed to ongoing negotiations, was not deemed a valid reason for the late application.

Additionally, the judge expressed concern that allowing the amendment could overload an already complex and heavily-loaded three-day trial scheduled for May 2025. The potential investigation into the non-use of the Rectangle Mark could complicate proceedings significantly.

Cost/Benefit Analysis

Judge Hacon also considered the cost/benefit implications of allowing the amendment. He noted that the defendants could initiate a separate action for revocation of the Rectangle Mark if necessary. Moreover, the potential benefits of including the non-use allegation at this stage were uncertain and could prove to be of limited practical value.

Conclusion

The application to amend was ultimately dismissed, with the judge emphasising the importance of maintaining the efficiency and focus of the upcoming trial. The decision underscores the court's discretion in managing complex intellectual property disputes and the need for parties to act promptly and diligently in raising issues.

Learn More

For more information on trade mark disputes and intellectual property law, see BeCivil's guide to English Data Protection Law.

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