In With Wise Limited (With Wise) v Wise Payments Limited (Wise Payments), Recorder, Amanda Michaels, considered the costs consequences of an abandoned strike-out application brought in related trade mark revocation proceedings.
Key takeaways
- Off-scale costs will not be awarded simply because an application is abandoned. That is not the same as acting unreasonably.
- Costs may have to wait. Where the issues raised by an abandoned application remain relevant to the substantive proceedings, the court may reserve the question of costs until trial.
- Revocation proceedings can create procedural complications. The case illustrates various challenges that could arise when related actions proceed separately.
Summary
In With Wise Limited (With Wise) v Wise Payments Limited (Wise Payments),[1] Recorder Amanda Michaels considered the costs consequences of an abandoned strike-out application brought in related trade mark revocation proceedings. Although the strikeout application was withdrawn before it could be heard, With Wise argued that the application was fundamentally misconceived and sought recovery of its off-scale costs. Wise Payments argued that the issue should be addressed at the conclusion of the substantive proceedings and denied that its conduct had been unreasonable. The Court ultimately reserved the question of costs until after trial.
The judgment is a useful illustration of the procedural principles governing departures from IPEC’s costs regime and demonstrates the Court’s reluctance to determine costs disputes where doing so risks prejudging substantive issues that remain in dispute. It also provides a practical example of the procedural difficulties that can arise when revocation proceedings are pursued separately from ongoing infringement proceedings.
Background
The dispute arose from trade mark infringement proceedings commenced in September 2022 by Wise Payments against With Wise. The claim concerned alleged infringement of two registered trade marks and passing off arising from With Wise’s use of the name “Wise” and stylised versions of it. One of the registrations relied upon was UK Trade Mark No. 3346396, referred to by the Court as the “Wise Logo Mark”.
The Wise Logo Mark was filed on 17 October 2018 and registered on 1 March 2019. As a result, it became vulnerable to revocation for non-use on 1 March 2024.
The parties unsuccessfully attempted to resolve the dispute through mediation.
On 2 October 2024, With Wise asserted that the Wise Logo Mark registration had not been put to genuine use and invited Wise Payments to voluntarily surrender the Wise Logo Mark registration. When no surrender was forthcoming, With Wise sought to amend its pleadings in the infringement proceedings to introduce a revocation claim based on non-use.
The application[2] to amend came before His Honour Judge Hacon in December 2024, more than two years after proceedings had begun. HHJ Hacon accepted that a non-use challenge could only be brought once the statutory five-year grace period had expired.[3] However, he was critical of the delay and did not accept the explanation that the action would have derailed without prejudice negotiations. He said the defendants were obliged to raise the allegation promptly in March 2024. As a consequence of the delay, he questioned whether the proposed amendment would comply with the cost-benefit requirements that form an important feature of IPEC litigation. He also expressed concern that adding a revocation claim shortly before trial could complicate and overload the proceedings.[4]
The amendment application was therefore refused. Nevertheless, HHJ Hacon expressly observed that there was ‘nothing to stop’ With Wise from commencing a separate revocation action.[5]
Acting on those observations, With Wise commenced separate revocation proceedings on 19 December 2024 seeking a declaration that the Wise Logo Mark had not been put to genuine use. Rather than addressing the merits of the revocation claim, Wise Payments responded with an application to strike out the revocation proceedings as an abuse of process. Wise Payments argued that the revocation proceedings represented an unjustified “proliferation of proceedings”.
The strike-out application was listed to be heard alongside an application by With Wise for an expedited trial. Before those applications could be determined, Recorder Michaels heard the trial of the underlying infringement proceedings and subsequently circulated a draft judgment. In that judgment, she found, amongst other things, that With Wise had infringed the Wise Logo Mark.
Following receipt of the draft judgment, Wise Payments informed the other side that it no longer intended to pursue its strike-out application. Accordingly, when the parties appeared before Recorder Michaels on 14 July 2025, the only issue requiring determination was the consequences of the abandoned application. In particular, With Wise sought to recover its off-scale costs incurred in relation to the strike out application.
The law
The decision centres upon the operation of the specialist costs regime applicable in IPEC proceedings. Recoverable costs in IPEC are subject to caps and scale limits designed to provide certainty and proportionality.
In the IPEC, costs are capped at stages and reserved until after trial. The exception is where a party has behaved unreasonably.[6] The threshold is deliberately high.
In support of its application for off-scale costs, With Wise argued that Wise Payments’ application had been launched as a delaying tactic and that the application was “utterly hopeless”.[7]
The Court considered a number of authorities addressing the meaning of unreasonable conduct in the context of IPEC proceedings. In particular, Recorder Michaels was referred to the discussion in Photobooth v Nephb[8] of principles derived from Link Up Mitaka Ltd t/a Thebigword v Language Empire Ltd.[9]
Recorder Michaels observed:
“It is it seems to me possible to distil the following four points:
- The mere fact that an application fails is not in and of itself evidence that the applicant was unreasonable to bring it.
- The bringing of a truly groundless application may amount to unreasonable conduct.
- “Unreasonable conduct” under r.63.26(2) is not concerned with the behaviour or attitude of the parties generally, but rather with their behaviour in and towards the process of the court.
- Behaviour that only forms part of the general “cut and thrust” of litigation is unlikely to be regarded as unreasonable for the purposes of r.63.26(2).”
A further legal issue arose from the abuse of process arguments advanced by Wise Payments. Although Wise Payments withdrew its strike-out application, it indicated in its skeleton argument that it intended to continue relying on abuse of process arguments as part of its substantive defence to the revocation proceedings. Consequently, the question whether the revocation action constituted an abuse of process remained a live issue between the parties notwithstanding abandonment of the specific strike-out application.
Recorder Michaels considered that this point created a difficulty in determining costs immediately. Any assessment of whether the strike-out application had been hopeless or unreasonable would inevitably require the Court to express views on the merits of arguments that remained to be determined at trial. There was therefore a real risk that a costs ruling could pre-empt the proper determination of substantive issues.[10]
For that reason, the Court concluded that the appropriate course was to reserve the question of costs until after trial of the revocation proceedings. While Recorder Michaels expressed sympathy for With Wise’s position, she considered that it was appropriate to postpone any determination of costs until the substantive issues had been resolved.[11]
The Court also observed that the parties’ existing skeleton arguments and the transcript of the costs hearing could effectively be ‘banked’ and relied upon at a later stage.[12]
Conclusion
[1] With Wise Limited v Wise Payments Limited [2025] EWHC 1809 (IPEC)
[2] Wise Payments Limited (formerly Transferwise Limited) v With Wise Limited & Ors [2024] EWHC 3448 (IPEC)
[3] Paragraph 7
[4] Paragraph 8
[5] Paragraph 21
[6] Civil Procedure Rule 63.26(2)
[7] Paragraph 14
[8] Photobooth v Nepbh [2022] EWHC 1634 (IPEC) paragraphs 24-25
[9] Link UP Mitaka Limited trading as Thebigword v Language Empire Limited, Yasar Zaman [2018] EWHC 2728 (IPEC)
[10] Paragraph 17
[11] Paragraph 18
[12] Ibid Para 19.
