Diesel S.P.A. v Controller of Patents

• Jurisdiction: Ireland
• Court: Supreme Court
• Judgment Date: 19 March 2020
• Neutral Citation: [2020] IESC 7
• Docket Number: [S.C. No. 33 of 2019]

Diesel S.P.A.,

Appellant

and

The Controller of Patents, Designs and Trade Marks and Montex Holdings Limited,

Respondents

[2020] IESC 7

[S.C. No. 33 of 2019]

Supreme Court

Evidence — New evidence on appeal — Intellectual property — Appeal from decision of Controller — Refusal of application for registration of trade mark — Application for leave to bring forward further material for consideration on appeal — Applicable test — Scope of appeal — Whether test applicable to admission of new evidence on ordinary appeal from decision of High Court applicable — Whether correct test applied by High Court — Whether admission of new evidence correctly refused — Trade Marks Act 1963 (No. 6), s.26(9).

The Trade Marks Act 1963 made provision in s. 26 for the first respondent to hear objections to the registration of trade marks and in s. 57 for appeals against the decision of the first respondent to the High Court. Section 26(9) of the 1963 Act provided:

“On the hearing of an appeal under section 57 of this Act against a decision of the Controller under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court.”

No manner for the bringing forward of further material was ever prescribed for the purposes of s. 26(9).

Section 57(1) of the 1963 Act provided:

“An appeal shall lie to the Court from any order or decision of the Controller under any provision of this Act … and the Court may make such order confirming, annulling or varying the order or decision or correction of the Controller as it thinks fit.”

The appellant appealed to the High Court pursuant to s. 57 of the 1963 Act against the first respondent's refusal to grant the appellant's application to register its trade mark. The appellant issued a motion seeking to bring forward further evidence for the consideration of the High Court on its appeal. This application was successful in part in the High Court (Binchy J.) (see [2016] IEHC 415). The High Court found that the nature of the second respondent's objection to the appellant's application to register their trade mark favoured admitting some of the proposed evidence, despite the fact that the evidence could have been filed earlier, that no explanation had been offered by the appellant as to why it was not submitted at first instance and that it was being brought forward in response to the decisions of the first respondent under appeal.

The first respondent appealed and the appellant cross-appealed against the judgment of the High Court to the Court of Appeal. The Court of Appeal ([2018] IECA 299) allowed the first respondent's appeal and refused the appellant's cross-appeal, finding that the basis upon which the High Court should approach an application to admit new evidence in an appeal under s. 57 was the same test as applied to the admission of new evidence in appeals of decisions of the High Court and that the context of this particular appeal, being the registration of trade marks, did not raise issues of public policy that warranted a more flexible approach to the admission of new evidence on an appeal. Further, the Court of Appeal, on the basis of the High Court's findings with regard to the availability of the evidence and the absence of an explanation as to why it was not brought forward at first instance, found that the appellant had failed to meet the test for the admission of new evidence.

The appellant sought and was granted leave to appeal to the Supreme Court (see [2019] IESCDET 117).

Held by the Supreme Court (Clarke C.J., MacMenamin, Dunne, Charleton and Irvine JJ.), in dismissing the appeal, 1, that, from an evidential point of view, the position of the High Court in an appeal under s. 57 of the 1963 Act was the same as pertained in respect of ordinary appeals from the High Court, in that in both instances the court remained restricted to a consideration of the evidence that was before the first-instance decision-maker. Accordingly, the principles that underpinned the test for the admission of new evidence in ordinary appeals applied equally well to applications to admit new evidence in trade mark appeals. The first-instance hearing was not to be treated as a dress rehearsal; the parties had to be aware of the finality of litigation, and bring forward their best case for adjudication.

Murphy v. Minister for Defence [1991] 2 I.R. 161, Unilever PLC v. Controller of Patents[2005] IEHC 426, [2006] 2 I.L.R.M. 210, Emerald Meats Limited v. Minister for Agriculture[2012] IESC 48 and Fage UK Limited v. Chobani UK Limited[2014] EWCA Civ 5 followed.

2. That although the test for the admission of new evidence in ordinary appeals was rigorous in its requirements, it was not a legal straitjacket and would yield where it would be an affront to the fair and proper administration of justice not to admit the evidence proposed.

Lough Swilly Shellfish Growers Co-Op Society Ltd. v. Bradley [2013] IESC 16, [2013] 1 I.R. 227 and Student Transport Scheme Limited v. Minister for Education and Skills[2015] IECA 303 considered.

3. That the scope of an appeal under s. 57 of the 1963 act was not indistinguishable from the scope of an ordinary appeal from the High Court. The key distinction was that an appellate court hearing an appeal from the High Court was precluded from making its own assessment of the evidence. That was not the case under s. 57.

Hay v. O'Grady [1992] 1 I.R. 210 distinguished.

4. That as the High Court was constrained by the provisions of s. 26(9) of the 1963 Act with respect to the evidence it could admit upon an appeal, it was required under s. 57 to determine the appeal as it thought fit, unconstrained by the findings of the first respondent, and thus the appeal could be described as an “appeal on the record”. Given the scope of the appeal, and the participation of the first respondent in the appeal, there was no obligation on the part of the High Court to show any deference to the decision of the first respondent.

FitzGibbon v. Law Society of Ireland [2014] IESC 48, [2015] 1 I.R. 516 considered. Orange Ltd. v. Director of Telecoms (No. 1)[2000] 4 I.R. 136 distinguished.

5. That the scope of an appeal, in the sense of whether it was a review of a first-instance decision or a de novo hearing, had a material bearing upon the manner and circumstances in which the appellate court could permit new evidence to be admitted on an appeal.

6. That the public policy in ensuring the finality of litigation was not attenuated in the context of trade mark litigation so as to warrant a more expansive approach to the admission of additional evidence on appeal by the fact that the applicant was not precluded from making a further application to secure registration of its trade mark. The purpose of that entitlement was not to dispense with any policy of finality, but to cater to a possible change in circumstances between the original and later application; any such further application would be assessed as of the date it was filed and would, if successful, provide protection only from that date.

Hunt-Wesson Inc.'s Trade Mark Application [1996] R.P.C. 233 not followed.

7. That as the 1963 Act contemplated that the parties to a contested trade mark application would have the opportunity to make their case at first instance and on appeal based upon the same materials, and as the High Court could not remit proceedings to the first respondent, there was potential for serious prejudice were a broader or less rigorous test to be applied on an application to admit new evidence on a s. 57 appeal.

8. That the detailed procedural rules for the exchange of evidence before a contested trade mark application indicated that evidence gathering ought to be at an end prior to a hearing before the first respondent, and if the parties were confined to the evidence they had furnished to each other in accordance with those rules, it was difficult to see how the proceedings would take an “unexpected turn” so as to warrant the admission of new evidence.

Emerald Meats Limited v. Minister for Agriculture [2012] IESC 48 considered.

Cases mentioned in this report:

BALI Trade Mark [1966] R.P.C. 387; [1966] F.S.R. 8.

Bus Eireann v. Controller of Patents [2008] 1 I.L.R.M. 428.

Club Europe Trade Mark [2000] R.P.C. 329.

Diesel S.P.A. v. Controller of Patents, Designs and Trade Marks [2016] IEHC 415, (Unreported, High Court, Binchy J., 9 June 2016).

Diesel S.P.A. v. Controller of Patents, Designs and Trade Marks [2018] IECA 299, (Unreported, Court of Appeal, 2 October 2018).

E I Dupont de Nemours & Co v. S T Dupont [2003] EWCA Civ 1368, [2006] 1 W.L.R. 2793; [2004] I.P. & T. 559; [2004] F.S.R. 15.

Emerald Meats Limited v. Minister for Agriculture [2012] IESC 48, (Unreported, Supreme Court, 30 July 2012).

Fage UK Limited v. Chobani UK Limited [2014] EWCA Civ 5, (Unreported, Court of Appeal of England and Wales, 28 January 2014).

FitzGibbon v. Law Society of Ireland [2014] IESC 48, [2015] 1 I.R. 516; [2016] 2 I.L.R.M. 202.

In re Application of Hamilton Cosco Inc. [1966] I.R. 266.

Hay v. O'Grady [1992] 1 I.R. 210; [1992] I.L.R.M. 689.

Henderson v. Henderson (1843) 3 Hare 100; 67 E.R. 313; [1843–60] All E.R. Rep. 378.

Hunt-Wesson Inc.'s Trade Mark Application [1996] R.P.C. 233.

Lough Swilly Shellfish Growers Co-Op Society Ltd. v. Bradley [2013] IESC 16, [2013] 1 I.R. 227.

Montex Holdings Ltd. v. Controller of Patents [2000] 1 I.R. 577; [2000] 1 I.L.R.M. 481.

Montex Holdings Ltd. v. Controller of Patents [2001] 3 I.R. 85; [2002] 1 I.L.R.M. 208.

Murphy v. Minister for Defence [1991] 2 I.R. 161.

Orange Ltd. v. Director of Telecoms (No. 1) [2000] 4 I.R. 136; [1999] 2 I.L.R.M. 81.

Philadelphia Storage Battery Co. v. Controller of Industrial and Commercial Property and N. V. Philips Gloeilampen-fabrieken [1935] I.R. 575.

Seven-Up v. Bubble Up [1990] I.L.R.M. 204.

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