In brief
- The Wise Payments Ltd v With Wise Ltd & Ors case demonstrates how courts will apply the Supreme Court's SkyKick decision on trade mark filings with broad specifications.
- The court found bad faith in relation to "computer software" due to a lack of commercial justification, but upheld terms related to financial services given the owner's consistent business expansion into broader banking services.
- Brand owners must carefully consider their commercial rationale when seeking protection for particular goods and services, and be prepared to provide explanations for broad specification terms.
Following the Supreme Court decision in SkyKick in November 2024, it has become necessary for brand owners to take into account the court's guidance on bad faith and broad specification terms when filing and enforcing trade marks. In June 2025, the UK Intellectual Property Office (UKIPO) issued guidance as to how it would approach potential bad faith filings arising from broad specifications. In particular, the guidance notes that, whilst the UKIPO will not automatically object to the use of broad terms such as "computer software", applicants should assess carefully what is appropriate for their intended use and consider applying for coverage in a subcategory where that is appropriate.
An example of how the courts will approach these issues post-SkyKick can be seen in the decision of the Intellectual Property Enterprise Court in Wise Payments Ltd v With Wise Ltd & Ors.
Background
Wise Payments Ltd had brought a claim for trade mark infringement relying upon its trade marks for Wise (a figurative mark) and TRANSFERWISE. The defendants counterclaimed for passing off and also challenged the validity of the claimant's marks under section 3(6) of the Trade Marks Act 1994, alleging that the specifications included "terms of such breadth that the reasonable inference is that the claimant had no bona fide intention to use them for such a breadth of goods and services". Specifically, the defendants challenged:
- "Computer software and application software" in Class 9; and
- "Financial affairs, monetary affairs, financial services" and "internet accounts and banking" in Class 36 and "information, consultancy and advice" related to them.
Whilst the court found partially in the claimant's favour on trade mark infringement, the defendant's passing off counterclaim also partially succeeded.
Bad faith filing
The judge noted that, as discussed by the UKIPO Appointed Person in CNVRG CNVRG.IO trade mark in another recent decision, the SkyKick decision had raised the bar "as to what may reasonably be expected of applicants for trade marks". Applying the principles set out in SkyKick, the judge concluded that terms such as 'computer software' and 'financial affairs' were broad and imprecise (and represented the kind of terms that may now be challenged by the UKIPO at the application stage). However, including imprecise terminology, without more, did not mean that the marks were applied for in bad faith. The defendants therefore had to raise an inference which rebutted the initial presumption in favour of good faith, such that the claimant then needed to provide a plausible explanation of the objectives and commercial logic of the application.
In relation to the Class 36 services, the court considered the claimant's business expansion from money transfer to broader banking services. Given this consistent expansion, the court could not infer there were sub-categories of financial services for which the claimant never intended use and where there was no realistic prospect of it ever doing so. Therefore, the defendants had not raised a sufficient inference of bad faith in respect of these services.
However, the court reached the opposite conclusion for computer software and application software in Class 9. While the claimant described itself as a software business, it gave no evidence of third-party downloads or the scale of its use of software. The court found that design or marketing of software was not the focus of the business, and the claimant was not the sort of business which would be expected to market diverse software. The defendants had raised a sufficient inference that these terms were not necessary to protect the claimant's business or future business, and the burden therefore fell on the claimant to justify the broad terms. The claimant had, however, failed to produce any explanation to justify the breadth of its specification, which led to the court's finding of bad faith.
The IPEC therefore amended the claimant's specifications to restrict them to a scope that would be reasonable for the claimant's business, namely limiting computer software to that "relating to financial services, monetary services, and banking services in connection with electronic money and currency transfer services" and other specific financial services.
Implications for trade mark owners
The Wise Payments decision demonstrates application of the Supreme Court's approach to broad terms in specifications, and the considerations to take into account when enforcing trade marks. Brand owners should consider carefully their commercial rationale in seeking protection for particular goods and services, taking into account the UKIPO guidance. In Wise Payments, the claimants were unable to provide an explanation of an appropriate commercial rationale to displace the inference of bad faith that arose.