DIESEL - 177237-177240-and-177242-177245

• Administrative Decision Number: 177237-177240-and-177242-177245
• opponent: MONTEX HOLDINGS LIMITED
• Section: Trade Marks Act, 1996 - 2008-2017

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1963 AND THE TRADE MARKS

ACT 1996

In the matter of applications for registration of Trade Mark Nos. 177237, 177238, 177239, 177240,

177242, 177243, 177244 and 177245, and in the matter of Oppositions thereto.

DIESEL SpA Applicant

(Represented by Tomkins & Co.)

MONTEX HOLDINGS LIMITED Opponent

(Represented by FRKelly)

The Application

1. On 11 January, 1994 (the “relevant date”), DIESEL SpA, a Societa per Azioni organised and

existing under the laws of Italy, of 7 Via dell'Industria, 36060 Molvena, Province of Vicenza,

ITALY made application to register the marks as detailed in the table below:

Trade Mark

Number

Class & Goods

DIESEL

177237

16

Printed matter; newspapers, magazines, books and

catalogues; photographs; calendars, almanacs, diaries,

address books; personal organisers; note-pad holders;

pens, pencils; pencil stands, pencil cases; paper-clip

boxes; adhesive tape dispensers; patterns for making

clothes; all included in Class 16.

177238

18

Leather and imitations of leather, and goods made of

these materials included in Class 18; animal skins,

hides, trunks and travelling bags; umbrellas, parasols

and walking sticks; whips, harness and saddlery.

177239

24

Textiles and textile goods included in Class 24; bed

and table covers.

177240

25

Clothing, footwear, headgear.

2

Trade Mark

Number

Class & Goods

hereinafter referred

to as “DIESEL

Logo”

177242

16

Printed matter; newspapers, magazines, books and

catalogues; photographs; calendars, almanacs, diaries,

address books; personal organisers; note-pad holders;

pens, pencils; pencil stands, pencil cases; paper-clip

boxes; adhesive tape dispensers; patterns for making

clothes; all included in Class 16.

177243

18

Leather and imitations of leather, and goods made of

these materials included in Class 18; animal skins,

hides, trunks and travelling bags; umbrellas, parasols

and walking sticks; whips, harness and saddlery.

177244

24

Textiles and textile goods included in Class 24; bed

and table covers.

177245

25

Clothing, footwear, headgear.

2. The applications were accepted for registration and advertised accordingly in Journal No. 1934

dated 23 January, 2002.

3. Notices of Opposition to the registration of the trade marks pursuant to Section 26 of the Trade

Marks Act, 1963 (the “1963 Act”) were filed on 21 February 2002 by Montex Holdings Limited

(hereinafter referred to as “Montex”), an Irish company, of Mall Road, Monaghan, Ireland. The

Applicant filed a counter-statement on 10 May, 2002 and evidence was, in due course, filed by

the parties under Rules 37, 38, 39 and 40 of the Trade Marks Rules, 1963 (the “1963 Rules”).

Further evidence was taken viva voce on oath at the Hearing of the matter from Mr. Patrick

McKenna, a director of the Opponent’s company, on foot of a summons issued by the Controller

pursuant to section 92 of the Patents Act, 1996, as amended.

4. The oppositions became the subject of a hearing before me, acting for the Controller, on 21

May, 2012. The parties were notified on 4 April, 2013 that I had decided to uphold the

oppositions in respect of applications Nos. 177240 and 177245 (i.e. both the word mark

DIESEL and the DIESEL Logo mark in respect of clothing, footwear and headgear, in Class

25), but to allow the other six applications to proceed to registration. I now state the grounds of

my decision and the materials used in arriving thereat, in response to a request by the Applicant

in that regard, pursuant to Rule 27(2) of the Trade Mark Rules, 1996 filed on 9 April, 2013.

3

5. The applications at issue were filed under the Trade Marks Act 1963, under which there was no

provision to file a multi-class application. Therefore, there were eight separate applications that

resulted in eight corresponding oppositions. For the sake of expediency and efficiency, a single

hearing was held in respect of all eight oppositions, and, in keeping with the need to maintain

those objectives, this document comprises the written grounds of all eight decisions.

Grounds of Opposition

6. In its Notices of Opposition the Opponent states that it has extensively carried on business in

Ireland, under the trade mark DIESEL, as manufacturers and merchants of clothing; and raises

objection to the present applications under certain Sections of the 63 Act, which I summarise as

follows:

- Section 2 and Section 25 – the Applicant has no intention to use the trade marks in relation to

either all or some of the goods embraced by the applications, (though this ground was not

raised in the Notices of Opposition in respect of Application Nos. 177240 and 177245 for

goods in Class 25);

- Section 2 and Section 25 - the Applicant cannot make any lawful claim to be the proprietor of

the DIESEL trade marks in Ireland;

- Section 17 and Section 18 - the Applicant’s marks are not adopted, or capable of being

adopted, to distinguish the goods of the Applicant from the goods of other traders, including

goods sold by the Opponent; and

- Section 19 – the proposed use of the Trade Marks is calculated to deceive and cause

confusion and is otherwise disentitled to protection in a Court of Law

The Opponent also claimed that the applications ought to be refused by the Controller in the

exercise of his discretion.

Counter-Statement

7. In its Counter-Statement the Applicant denies all the grounds of opposition.

Rule 37 Evidence

8. Evidence submitted by the Opponent under Rule 37 of the 1963 Rules consists of a Statutory

Declaration and supporting evidence, by way of five exhibits (“EXH 1” to “EXH 5”), dated 19

December 2002, of Michael Heery, Managing Director of Montex. Much of the declaration is