TransferWise sues rival for TM infringement
Online payment provider TransferWise is suing rival Wise for trademark infringement and unfair competition, arguing that its name and recent trademark applications are likely to cause confusion.
The company filed the action in the US District Court for the Southern District of New York on June 29.
In the filing, UK-based TransferWise stated it has been using the word mark “TransferWise” in commerce in the United States since 2014 and has been using its “TransferWise” word mark globally since 2011.
It stated that the defendant’s name was “confusingly similar”, an issue that had already been flagged during discussions between the two companies regarding the integration of TransferWise’s technology into Wise’s payment platform earlier in the year.
“The similarity of Wise’s chosen name to TransferWise’s marks and TransferWise’s objection to Wise’s use of a confusingly similar mark on its financial products were repeatedly made known to Wise,” said the filing.
A day before discussions fell through, Wise filed two trademark applications before the United States Patent and Trademark Office for the marks “Banking by Wise” on June 16, 2020, spurring TransferWise into legal action.
The filing said: “In addition to its common law rights to its marks, TransferWise has achieved considerable goodwill and fame in the United States and abroad in connection with its international fund transfer services, financial account services, debit card offering, and other financial services-related offerings, in connection with its marks,” as well as in connection with “its downloadable mobile-phone payment application, web-based application, and computer software platforms”.
The filing claims that “Wise was aware of TransferWise’s reputation and goodwill in connection with its foreign-currency payment services, customer account services, debit card offering, and related financial services and software applications”.
“Nevertheless, Wise elected to market its products and services using a mark that is likely to cause consumer confusion with TransferWise’s products and services,” the filing said.
TransferWise claims that as a result of the confusion caused by the similar sounding names, it has and “will continue to suffer monetary damages, the full extent of which is as yet undetermined”.
In 2020, TransferWise recorded eight million users, who transfer more than $5bn a month. More than one million users of TransferWise’s products and services live in the US.
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