UK Trademark Law Gets a Reality Check: Courts Demand Genuine Intent

UK Trademark Law Gets a Reality Check: Courts Demand Genuine Intent

Introduction

The UK Supreme Court’s ruling in Sky plc v SkyKick UK Ltd (Nov 2024) established that trademarks with overly broad specifications can be invalidated for bad faith. Its first practical impact has been seen in Wise Payments Ltd v With Wise Ltd & Ors (High Court, 11 July 2025), where the court scrutinised broad filing strategies and curtailed vague terms such as “computer software”.

Factual Background

Wise Payments, a fintech specialising in global money transfers, relied on its WISE figurative mark and TRANSFERWISE word mark, both registered with broad specifications in Classes 9 (software) and 36 (financial services).

It sued With Wise, a logistics onboarding solutions company, for trademark infringement.

In response, With Wise counterclaimed that Wise Payments’ registrations were partially invalid, arguing the specifications were excessively broad and filed in bad faith.

Procedural Posture

The counterclaim targeted:

• Class 9: “computer software” and “application software”
• Class 36: “financial affairs, monetary affairs, financial services, internet accounts and banking”

The court was tasked with applying SkyKick principles to test whether the presumption of good faith could be rebutted.

Court’s Observations

• Presumption of Good Faith: Applicants enjoy this presumption, but under SkyKick it can be rebutted if no plausible commercial rationale exists for the breadth of the specification.
• Software Goods (Class 9):

o Wise Payments produced no evidence to justify such wide-ranging claims.

o Its core business did not extend to every conceivable software product.

o The court held there were “many sub-categories of software” where Wise had no intention or realistic prospect of use.

o Finding a “complete failure” to justify scope, the court inferred bad faith and trimmed Class 9 to software connected with Wise’s actual financial/monetary services.

• Financial Services (Class 36):

Though “broad and imprecise,” Wise’s demonstrated business expansion meant the presumption of good faith was not rebutted.

o The terms in Class 36 survived, but the judgment cautioned that similarly broad filings might not withstand scrutiny without strong commercial evidence.

Reasoning and Analysis

The decision reflects SkyKick’s shift from principle to practice: courts will actively prune back unjustified specifications rather than leave them untouched. Importantly, the UKIPO and courts are now aligned—both prepared to challenge vague terms like “computer software” if unmoored from commercial reality.

The case highlights that broad terms may be modified rather than struck out entirely, striking a balance between protecting legitimate rights and curbing speculative filings.

Implications

• Trademark owners must be ready to articulate clear commercial rationales for broad specifications.
• Existing portfolios with wide Class 9 terms may face heightened scrutiny, particularly in litigation.
• Rights holders should review legacy filings before enforcement actions.
• The decision marks the end of an era of unchecked broad specifications—especially in software—replacing it with protection rooted in demonstrable intention and use.