The risks of rebranding without carrying out thorough clearance searches was amply illustrated by a recent ruling of the Intellectual Property Enterprise Court (IPEC) on a trade mark dispute.
A financial services company had begun to use the name ‘Wise’ following a rebranding. At around the same time, a company that provided software solutions to logistics companies also began to use the name ‘Wise’. After both companies began to receive calls and messages from the other’s customers, the financial services company brought claims of trade mark infringement and passing off against the software company. The software company counterclaimed, alleging passing off and that several of the financial services company’s trade marks were invalid.
Ruling on whether two of the financial services company’s trade marks had been applied for in bad faith, the IPEC noted that although the specifications included broad and imprecise terms such computer software and financial affairs, that could not, without more, show that they had been applied for in bad faith. Given the wide range of services offered by the financial services company, it could not be inferred that there were other such services in relation to which it had never had any intention of using the mark and would never realistically do so. In relation to software, however, the breadth of the specifications raised a concern about the company’s good faith in applying for them. The burden of proof therefore fell upon it to justify its trade mark application strategy, which it had failed to do. The IPEC therefore considered it right to amend the specifications to restrict them to a reasonable specification for the business.
Considering the financial services company’s claim of trade mark infringement in relation to its logo, the IPEC found there to be a medium-high degree of similarity between it and the software company’s signs. Even without clear evidence of actual confusion, there was a likelihood of direct confusion between the logo and the signs when used in relation to identical or similar services. In the IPEC’s view, the software company’s use of the signs in relation to payroll services amounted to infringement.
The IPEC rejected the financial services company’s claim for passing off. The software company had launched an app using the ‘Wise’ name in April 2021. The financial services company had rebranded a month earlier, and it had not shown that it had generated a significant or substantial goodwill in the name by then. However, the software company’s passing off claim was upheld in relation to the financial services company’s payroll and invoicing services. The software company had acquired goodwill in the ‘wise’ name by the time the financial services company had begun to use the identical name for services that included payroll functions. On that basis, the IPEC also accepted that certain specifications of two trade marks subsequently registered by the financial services company should be invalidated.
