Iona Berkeley appeared for the Claimant (“Wise”), and four potential additional parties, three of which were resisting an application to join them to a passing off counterclaim brought by the Defendants (“the Application”). The Application was heard by Pat Treacy, sitting as a Deputy High Court Judge in IPEC. The original claim brought by the Claimant is for passing off and trade mark infringement of a device trade mark including the word “Wise” and the word mark ‘TransferWise’, both registered in relation to various goods in Class 9 and services in Class 36. The Application was made by the First Defendant in relation to its contingent passing off counterclaim. In particular, the First Defendant’s draft pleaded case on joint tortfeasorship for passing off concerned the decision by Wise to rebrand from TransferWise to Wise in 2021.
The Application raised issues concerning the Court’s application of the Civil Procedure Rules concerning amendments and joinder of new parties and involved consideration of CPR 20.5, 19.5, 3.4(2)(a) and (b) and 24(2)(a)) and the exercise of the Court’s discretion in this regard. It also involved the Court’s consideration of the correct legal test for joint tortfeasorship (as opposed to mere facilitation), with consideration of the roles of Directors and employed General Counsel. The Court also considered issues of appropriate case management in IPEC, including the IPEC cost benefit test, whether the action was one that required an exceptional 3 day trial estimate in IPEC, the possibility of an IPEC split trial concerning the contingent joint tortfeasorship issues or the possibility of a transfer to the High Court.
One of the proposed additional parties, Mr Nash (who had previously been employed by the Claimant as General Counsel for around two years and had also been a director for a 2 month period but had left the Claimant in early 2022) resisted joinder on the substantive ground that the draft pleaded case against him as an alleged joint tortfeasor did not disclose a case that had a reasonable prosect of success. The other two proposed additional parties did not resist the application on substantive grounds but resisted the application on the case management grounds that the counterclaim was only a peripheral and contingent part of the Defendant’s case and would add unnecessary complexity to the IPEC action.
The Court concluded that the pleaded case against Mr Nash did not disclose a claim with a real prospect of success. The pleaded case against him and the evidence relied upon by both the First Defendant and the Claimant/Mr Nash in the Application only amounted to evidence of mere facilitation of decisions made by others. Further, the joinder of Mr Nash would likely lead to satellite disputes about issues such as legal professional privilege. Therefore the Application against him was dismissed both on substantive and case management grounds. The Court allowed the joinder of the other two additional parties as although their joinder would add time and complexity, this could be case managed within the maximum three day trial window in IPEC, thereby meeting the cost benefit test. The suggestions of a split IPEC trial or transfer to the High Court were also rejected by the Court.