The UK Supreme Court’s judgment in Sky plc v SkyKick UK Ltd in November 2024 established that trademarks with overly broad specifications can be invalidated for bad faith. The recent High Court decision in Wise Payments Ltd v With Wise Ltd & Ors handed down on 11 July, demonstrates the practical impact of this principle, signalling the English courts’ willingness to scrutinise filing strategies and to invalidate, or amend, terms lacking genuine commercial justification. This article examines the Wise decision, focusing on the treatment of the widely used term ‘computer software’ and key takeaways for brand owners.
Background
The case arose from a trademark infringement claim. Wise Payments, a fintech company specialising in global money transfers, relied on a figurative WISE mark and the word mark TRANSFERWISE, both covering broadly drafted goods and services in Classes 9 and 36. It alleged that With Wise, a company which develops onboarding systems for logistics companies, infringed Wise’s marks through its use of the mark WISE in both plain and stylised word formats.
The key point of interest lies in With Wise’s counterclaim that the Wise marks had been applied for in bad faith and should be partially invalidated on the basis that the specifications were excessively broad and unsupported by any genuine intention to use the marks across such a wide range of goods and services. In particular, the counterclaim targeted the terms ‘computer software’ and ‘application software’ in Class 9 (software goods), and ‘financial affairs, monetary affairs, financial services and internet accounts and banking’ in Class 36 (financial services).
Court applies SkyKick findings
In referencing the SkyKick judgment, the court in the Wise decision, made several key findings on bad faith invalidity:
The court reaffirmed that trademark applicants benefit from a presumption of good faith. However, consistent with the Supreme Court’s judgment in SkyKick, this presumption can be rebutted, and in appropriate circumstances, the proprietor may be required to demonstrate a plausible commercial rationale for the breadth of the specification.
The court scrutinised the broad specification terms for software goods and financial services, finding, based on SkyKick, that:
Software goods: Wise Payments failed to produce any evidence or explanation to justify the breadth of its Class 9 specification. Although its business relied on software, this did not extend to the development or marketing of software of every conceivable kind. The court stated: “There must have been many sub-categories of software in relation to which the claimant never had any intention of using the marks and there was no realistic prospect of it ever doing so.”
The burden therefore fell to Wise Payments to justify the scope of its filing strategy and, in the court’s words, it “completely failed to do this”. The absence of any credible commercial rationale led the court to infer bad faith.
Financial services: While the terms were “broad and imprecise” the court found that due to Wise Payment’s business expansion, both before and after the application date, it could not infer that there are further subcategories of financial services in relation to which Wise Payments never had any intention of using the mark. The court therefore held, “with some hesitation” that the presumption of good faith had not been rebutted in this instance.
Consequently, the court limited Wise Payments’ Class 9 specification to software connected with its financial and monetary services (rather than striking out the marks or the entire class), ensuring that the scope of protection reflected the commercial reality and intentions behind the filing, excluding unrelated or speculative software categories lacking a clear business justification.
Relevance and practical takeaways
In the words of the judge in the Wise decision, SkyKick has “raised the bar” for trademark owners when defending bad faith invalidity challenges, who must now articulate clear commercial rationale and show genuine intention to use marks across claimed specifications.
SkyKick moves from principle to consequence: The Wise decision demonstrates the first practical application of SkyKick principles in infringement proceedings. More specifically, the court’s treatment of the broad computer software term in Class 9 illustrates how quickly and decisively a previously accepted – and broad – term can now be trimmed back. What was once a reliable basis for opposing or preventing the use, or registration, of a similar mark in the software space may no longer offer the same breadth of protection.
Judicial and registry scrutiny aligned: The Wise decision also reinforces the alignment between court practice and UKIPO examination following SkyKick. Both the UKIPO and the courts are now prepared to challenge and, where appropriate, trim back over-broad trademark specifications that cannot be justified by reference to the applicant’s real or reasonably anticipated business activities.
Impact on filing strategy and existing trademark portfolios: While some commentary suggests existing broad specifications may be vulnerable post-SkyKick, portfolios that have cleared UKIPO examination remain largely secure, with little downside to retaining them. In practice, broad specifications can still be enforced, and bad faith challenges are likely to result in courts modifying, rather than striking-out, specifications to narrow their scope and reflect intended use. Pre-emptive narrowing is generally unnecessary, though owners of older filings may wish to review them before initiating proceedings.
Class 36: While financial services terms withstood challenge, this may not reliably protect similarly broad specifications without strong evidence. Rights holders relying on broad terms in Class 36 should be prepared to justify the commercial rationale behind them or risk the same outcome that befell the software goods in this case.
Looking Ahead
The Wise decision points towards the end of an era where broad specifications, particularly in Class 9, could be expected to stand unchallenged. Protection must now be grounded in demonstrable commercial reality, and applicants must be prepared to justify the scope of their filings with solid evidence and reasoning. Rights owners who adapt their filing and portfolio strategies will be better equipped to face heightened judicial scrutiny and avoid costly challenges.
Nathan Smith is an IP partner at Katten Muchin Rosenman UK and Anita Hodea is an associate.
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