Diesel SpA v Controller of Patents, Designs and Trademarks
| Jurisdiction | Ireland |
| Judge | Mr. Justice Gerard Hogan |
| Judgment Date | 02 October 2018 |
| Neutral Citation | [2018] IECA 299 |
| Date | 02 October 2018 |
| Court | Court of Appeal (Ireland) |
| Docket Number | Neutral Citation Number: [2018] IECA 299 Record Nos. 2017/14 2017/18 |
IN THE MATTER OF THE TRADE MARKS ACT 1963,
AND IN THE MATTER OF THE TRADE MARKS ACT 1996,
AND IN THE MATTER OF APPLICATION NUMBERS 177240 AND 177245 DATED 11TH
JANUARY, 1994, PURSUANT TO THE TRADE MARKS ACT 1963, BY DIESEL S.P.A
FOR REGISTRATION OF DIESEL (DEVICE) AS TRADE MARKS
IN CLASS 25 OF THE REGISTER OF TRADE MARKS
[2018] IECA 299
Neutral Citation Number: [2018] IECA 299
Record Nos. 2017/14
2017/18
THE COURT OF APPEAL
Trade mark registration – Admission of new evidence – Murphy v Minister for Defence [1991] 2 IR 161 – Plaintiff seeking leave to admit new evidence – Whether the test governing the admission of new evidence was that articulated in Murphy v Minister for Defence [1991] 2 IR 161
Facts: The first defendant, the Controller of Patents, Designs and Trademarks, appealed to the Court of Appeal against the decision of Binchy J delivered in the High Court, applying the more lenient standard governing the admission of new evidence in trade mark appeals which had been articulated by Laddie J in the English High Court in Hunt-Wesson Inc.'s Trademark Application [1996] RPC 233; to that extent Binchy J departed from the test in Murphy v Minister for Defence [1991] 2 IR 161. He accordingly granted the plaintiff, Diesel SpA, leave to admit new evidence. The proceedings arose out of a long-running trade mark dispute between the plaintiff and the second defendant, Montex Holdings Ltd. At issue in this appeal was whether the test governing the admission of that new evidence was that articulated by the Supreme Court in Murphy or whether a somewhat different test reflecting the special character of the trade mark registration process should apply.
Held by Hogan J that, given that it was clear from the provisions of s. 25(7) of the Trade Marks Act 1963 that the appeal from the High Court was primarily to be based on the record of the materials before the Controller, it follows that the admission of new evidence on appeal should largely be confined to exceptional or special cases; contrary to the view taken by the High Court, the principles articulated by the Supreme Court in Murphy must be taken to govern applications of this nature. Hogan J held that it was clear that this application failed the first limb of the Murphy test because all of the additional evidence sought to be admitted on appeal could with reasonable diligence have been admitted before the Controller; nor could it have been said that Diesel SpA was in some way taken by surprise so far as its failure to adduce this evidence was concerned, since the question of the extent of any pre-1994 user was at the heart of this application for registration.
Hogan J held that he would allow the appeal and refuse to grant Diesel SpA leave to adduce the new evidence before the Controller.
Appeal allowed.
Where an appellant in a trade mark appeal before the High Court wishes to adduce further evidence in that appeal, is the test governing the admission of that new evidence that articulated by the Supreme Court in Murphy v. Minister for Defence [1991] 2 I.R. 161? Or should a somewhat different test reflecting, perhaps, the special character of the trade mark registration process, apply in respect of that appeal?
This, essentially, is the principal issue which is raised in this appeal from the judgment of Binchy J. delivered in the High Court: see Diesel SpA v. Controller of Patents, Designs and Trade Marks [2016] IEHC 415. As the judge acknowledged in his judgment, this is the first time in which this matter was fallen to be determined at appellate level in this jurisdiction. In his judgment Binchy J. applied the more lenient standard governing the admission of new evidence in trade mark appeals which had been articulated by Laddie J. in the English High Court in Hunt-Wesson Inc.'s Trademark Application [1996] RPC 233 and to that extent Binchy J. departed from the Murphy test. He accordingly granted Diesel SpA leave to admit this new evidence. The Controller has now appealed to this Court against that decision.
Before, however, we can explore these questions, it is necessary first to sketch out the background to this appeal.
The present proceedings arise out of a long-running trade mark dispute between the plaintiff (which is by now a well known Italian company which specialises in the manufacture and sale of casual clothes such as jeans and jackets under the brand name 'DIESEL' for the international market, including Ireland) and the defendant Irish company, Montext Holdings Ltd. ('Montex'). Although Diesel SpA was formed in Italy in 1978, the original Montex Ltd. ('Monaghan Textiles') was incorporated in the State a year later when it began to sell its fashion wear in Ireland using the Diesel brand name. Montex Ltd. went into receivership in 1988 and its good will and proprietary rights were acquired by the present defendant, Montex. This has all led to a situation where these two corporate entities have vied for the right to use the trade mark 'DIESEL' in this jurisdiction in the context of clothing for the best part of twenty years.
There has already been significant litigation between the parties concerning this trade mark. In Montex Holdings Ltd. v. Controller of Patents [2001] IESC 36, [2001] 3 I.R. 85 Montex sought to have the trade mark DIESEL registered in its name, but this application was opposed by Diesel SpA on the basis that it was likely to lead to confusion so far as their products were concerned. The Supreme Court ultimately upheld the decision of the Controller to refuse registration by reason of the confusion issue having regard to the provisions of s.19 of the 1963 Act.
The present proceedings involve an attempt by Diesel SpA to obtain trade mark rights in respect of the use of the word 'DIESEL' in the context of the sale of its own fashion wear. Not surprisingly, this registration application has been opposed by Montex and, in some ways, these present proceedings parallel the original Montex Holdings decision, save, of course, that the position of the parties has been reversed. It must, however, be a matter of deep concern that this application for registration before the Controller was first made by Diesel SpA as far back as January 1994.
While Binchy J. considered - rather charitably perhaps - that the delays in processing this application for registration between 1994 to 2001 could be excused on the basis that the parties were awaiting the outcome of the Montex Holdings proceedings, there is simply no excuse for the continuing delays which have beset the present proceedings since the Supreme Court gave its decision in those proceedings in April 2001. A measure of the delays which have beset these present proceedings is that it is accepted that by reason of the antiquity of the proceedings the present appeal is still governed by the provisions of the 1963 Act, even though that Act was itself repealed as far back as 1996 – some twenty-two years ago – by the Trade Marks Act 1996.
As this Court has so frequently stated in recent times, the judicial mandate it has been assigned by Article 34.1 of the Constitution to discharge and uphold the proper and fair administration of justice is seriously compromised by inordinate delays of this kind. One might add that delays of this magnitude do little to inspire confidence in the orderly and efficient administration of justice. There is, however, no strike out application before this Court on the grounds of undue delay and in the present circumstances I will content myself with stating that in the aftermath of this judgment there must be no further delays on the part of the parties in the processing of the appeal before the High Court.
As I have already indicated, the pressing issue which arises on this appeal is a different one. As Binchy J. noted in his judgment, this application arises from the application of Diesel SpA to adduce further evidence in its appeal pursuant to s. 57 of the Trade Marks Act 1963 ('the 1963 Act') and Ord. 94, r. 48 RSC, from the decision of the first named defendant ('the Controller') dated 9th September 2013. By that decision the Controller refused the plaintiff's application for registration of the trademarks 'DIESEL' (word mark) and '' (device) in respect of clothing, footwear and headgear within class 25 of the Register of Trademarks.
Between 2001 and 2007 the application before the Controller had been characterised by a series of applications made by both parties under the Trade Mark Rules 1963 ( S.I. No. 268 of 1963) for extensions of time before the respective parties filed statutory declarations dealing with the use of the name 'DIESEL' in this context. Specifically, by a statutory declaration dated 7th October 2004, Mr. McKenna of Montex Holdings explained how that company had come to use the 'DIESEL' mark. This, then, gave rise to a request to permit the cross-examination of Mr. McKenna.
On 22nd March 2007 Montex sought leave under rule 40 of the 1963 Rules to admit evidence explaining why evidence as to the choice of the word 'DIESEL' as a brand had not been given in the first set of proceedings which had culminated in the Supreme Court decision in April 2001. On 26th October 2007 the Controller agreed to allow the cross-examination of Mr. McKenna, and to allow Montex to file evidence under rule 40 of the rules. This evidence was filed on 20th February 2008, by way of statutory declaration of Shane Smyth dated 15th February 2008.
The substantive hearing of the application took place on 21st May 2012 before the Controller. He delivered his decision on 4th April 2013, upholding the opposition of...
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