Diesel SPA v Controller of Patents, Design & Trademarks

• Jurisdiction: Ireland
• Judge: Mr. Justice Binchy
• Judgment Date: 09 June 2016
• Neutral Citation: [2016] IEHC 415
• Docket Number: [2013 No. 641 S.P.]
• Court: High Court
• Date: 09 June 2016

[2016] IEHC 415

THE HIGH COURT

Binchy J.

[2013 No. 641 S.P.]

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

BETWEEN

DIESEL S.P.A.

PLAINTIFF

AND

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS

FIRST DEFENDANT

AND

MONTEX HOLDINGS LTD.

SECOND DEFENDANT

Intellectual Property – The Trade Marks Acts 1963 & 1996 – Registration of Trademark – Evidential deficiencies – Permission to adduce more evidence – Availability of evidence – Existence of new factors

Facts: The plaintiff sought leave of the Court to adduce further evidence in an appeal brought by the plaintiff pursuant to s. 57 of the Trademarks Act 1963 against the decision of the first named defendant refusing to register the trademarks of the plaintiff. The plaintiff having successfully opposed the application of the second named defendant at the Supreme Court for registration of a Trademark that had been used by the plaintiff on the ground that it was likely to cause confusion, had instituted the present proceedings before the first named defendant. The first named defendant asserted that the plaintiff failed to exhibit proof of the sale of its goods during the relevant period and exhibit more invoices. The issue arose as to applicability of test for adducing fresh evidence. The plaintiff asserted that the Court should apply the test laid down in the case of Hunt-Wesson Inc.'s trademark application [1996] RPC 233 while the first named defendant argued that the Court must adhere to the law laid down in Murphy v. Minister for Defence [1991] 2 I.R. 161.

Mr. Justice Binchy granted leave to the plaintiff to adduce further evidence but in part. The Court did not permit the plaintiff to adduce certain category of the evidence. The Court held that it would apply the principles laid down in the case of Hunt-Wesson Inc.'s trademark application. The Court refuted the contention of the first named defendant that in Hunt-Wesson's case, there had been relaxation of the rules with the result that the applicant would not deliberately file the best evidence at the requisite stage and try to litigate the matter on appeal. The Court held that the principles laid down in the Hunt-Wesson's case namely, filing of the evidence at an earlier stage; reasons for not filing the evidence at that stage; nature of mark; nature of objections; the potential significance of new evidence; and prejudice that would likely to be caused to the opposite party were appropriate to safeguard the interests of both parties. The Court held that notwithstanding the fact that the plaintiff could have filed evidence earlier and offered no explanation for delay in filing the evidence, the core objection by the second named defendant that it had first used the disputed mark in Ireland, would require the plaintiff to adduce evidence. The Court found that no prejudice would be caused to the second named defendant by production of the data by the plaintiff regarding its sale and marketing activity during the relevant time period as those evidence were merely records and did not require any reply to be filed by the second named defendant. The Court however, did not allow the plaintiff to offer affidavits of distributors of the plaintiff simply on the ground that those evidences could have been provided by the plaintiff earlier, which he failed to do so.

JUDGMENT of Mr. Justice Binchy delivered on the 9th day of June, 2016.

1 By this application, the plaintiff seeks leave of the court to adduce further evidence in an appeal brought by the plaintiff pursuant to s. 57 of the Trademarks Act 1963 (hereafter ‘the Act of 1963’) and Order 94, rule 48 of the Rules of the Superior Courts 1988 (as amended), from the decision of the first named defendant (hereafter ‘the Controller’) dated 9th September, 2013, whereby the Controller refused the application of the plaintiff for registration in the name of the plaintiff of the trademarks DIESEL (word mark) and DIESEL (device) in respect of clothing, footwear and headgear within class 25 of the Register of Trademarks.

2 The application is the latest twist in a very long running dispute between the parties which first began in 1992, when the second named defendant (hereafter ‘Montex’) applied to the first named defendant (hereafter ‘the Controller’), to register the trademark DIESEL in Ireland. That application (the ‘Montex application’) was opposed successfully by the plaintiff. The decision on that application was given by the Controller on the 22nd April, 1998, and was appealed by Montex to this Court (the ‘Montex proceedings’), which delivered its decision (O'Sullivan J.) on 14th January, 2000. O'Sullivan J. upheld the decision of the Controller for two reasons:-

(i) That Montex had failed to respond to an allegation made by the plaintiff that it had not adopted the name, DIESEL, bona fide, and for that reason alone, that application (hereinafter the ‘Montex application’) should not succeed; and

(ii) There would be confusion between the marks used by the plaintiff and Montex if the application was allowed, and therefore it should not be allowed pursuant to s. 19 of the Trademarks Act, 1963 (hereafter the ‘Act of 1963’).

3 Montex appealed that decision to the Supreme Court, which delivered its decision on 5th April, 2001. In his judgment, Geoghegan J. agreed with O'Sullivan J. in the High Court that there was ample evidence before the hearing officer and before the High Court to justify a finding of likelihood of confusion and that accordingly, the application should be refused under s. 19 of the Act of 1963.

4 Importantly, the High Court found as a fact that there was evidence, prior to the Montex application, of usage by both parties of the DIESEL mark such to be sufficient to confer upon Montex prima facie entitlement to be registered as owner of the mark and upon the plaintiff locus standi to oppose the Montex application.

5 The plaintiff brought forward the application the subject of these proceedings in 1994, and this was opposed by Montex. Understandably, no steps were taken to progress or oppose this application until after the delivery of the Supreme Court decision on the Montex application on 5th April, 2001. Thereafter, the chronology of this application which was conducted pursuant to the Trade Mark Rules. 1963 (‘the rules’) is as follows:

(i) On 21st February, 2002 Montex filed its notice of opposition to the plaintiffs' application in the proceedings;

(ii) On 10th May, 2002 the plaintiff filed its counterstatement;

(iii) On 10th December, 2003 having sought three extensions of time, the plaintiff filed its evidence pursuant to rule 38 of the rules, comprising statutory declarations of Renzo Rosso (founder and owner of the plaintiff company) dated 14th October, 2003, and of Peter Schofield Lawley (then commercial manager of the plaintiff company in London) dated 26th October, 2003;

(iv) On 7th October, 2004 following four extensions of time, Montex filed evidence pursuant to rule 39 of the rules comprising statutory declarations and exhibits of Michael Heery, Keith Doyle, David O'Connor, Michael Sherlock and Patrick McKenna; all dated 5th October, 2004. The affidavit of Mr. McKenna explained, for the first time, how Montex claimed it came to use the DIESEL mark. This gave rise to a request to allow cross examination of Mr. McKenna;

(v) On 22nd March, 2007 Montex sought leave under rule 40 of the 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;

(vi) On 26th October, 2007 the controller agreed to allow 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;

(vii) On 21st May, 2012 the hearing took place before the controller;

(viii) On 4th April, 2013 the controller delivered his decision, upholding the opposition of Montex and refusing application of plaintiff;

(ix) On 7th November, 2013 the plaintiff appealed against decision of controller; and

(x) On 24th February, 2014 this application for leave to admit additional evidence was brought.

6 In his decision, refusing the plaintiff's application, the Controller was highly critical of the plaintiff for failing to provide more evidence than it did relating to the sale of its goods in Ireland, during the relevant period and was in particular critical of the failure to exhibit more invoices proving sales of its products and magazines in which the plaintiff claimed it published advertisements or evidence in relation to the circulation of those magazines in Ireland. In more general terms he stated that there was a ‘notable lack of concrete evidence and exactitude’ in the plaintiff's application. The plaintiff brings this application to adduce further evidence in order to address the evidential deficiencies identified by the Controller.

7 This application is grounded upon the affidavit of Ms. Deirdre Fallon, solicitor for the plaintiff dated 24th February, 2014. In para. 3 of that affidavit she states that the additional evidence in respect of which leave is sought is set forth in:

(i) an unsworn (the affidavit was sworn subsequently) but approved affidavit of Mr. Stefano Lesurum;

(ii) an affidavit of Mr. Simon Cutting; and

(iii) an affidavit of Mr. Edmund Shanahan.

8 Mr. Lesurum states that he is the head of legal affairs in the Company. There are twelve exhibits to his affidavit. These are marked ‘SL1’ to ‘SL12’. With the exception of the first...