Diesel Spa v The Controller of Patents, Desgins and trademarks and Another

JurisdictionIreland
JudgeMr. Justice Cregan
Judgment Date08 December 2023
Neutral Citation[2023] IEHC 757
CourtHigh Court
Docket Number[2013/641 SP]

In the Matter of the Trademarks Act, 1963

And in the Matter of the Trademarks Act, 1996

And in the Matter of An Applications Number 177240 and 177245

Dated 11th January, 1994 Pursuant to the Trademarks Act, 1963

By Diesel Spa

For Registration of Diesel and Diesel (Device) As Trademarks

In Class 25 of the Register of Trademarks

Between
Diesel Spa
Plaintiff
and
The Controller of Patents, Designs and Trademarks
First Defendant

and

Montex Holdings Limited
Second Defendant

[2023] IEHC 757

[2013/641 SP]

THE HIGH COURT

Trademarks – Registration – Injunction – Plaintiff seeking registration of trademarks – Whether the first defendant erred in failing to give effect to the principle that the deception caused by another should not cause disadvantage to the trademark applicant

Facts: The plaintiff, Diesel SpA (Diesel Italy), appealed to the High Court against a decision of the first defendant, the Controller of Patents, Designs and Trademarks (the Controller), dated 10th September, 2013 upholding the opposition of the second defendant, Montex Holdings Ltd (Diesel Ireland), to the registration by Diesel Italy of the trademarks “Diesel” and “Diesel (Device)” in respect of clothing, footwear and headgear. The grounds of appeal stated that the Controller had erred on various questions of law and/or fact: (a) in permitting Diesel Ireland to introduce evidence upon an issue already determined by the High Court in proceedings between the same parties; (b) in determining an issue previously determined in the first set of proceedings (High Court record number 1998/582 SP) and doing so in a manner contrary to the determination of the High Court (O’Sullivan J); (c) in permitting or allowing in evidence which was inadmissible by reason of being hearsay evidence and attributing undue weight to that evidence; (d) in giving any weight or undue weight to the evidence of Mr McKenna in circumstances where the Controller found certain parts of Mr McKenna’s evidence to be of questionable credibility; (e) in failing to dismiss the opposition of Diesel Ireland to the plaintiff’s application having regard to the bad faith of Diesel Ireland in the adoption of the “Diesel” mark; (f) in determining that Diesel Italy was not the proprietor or owner of the trademark “Diesel”; (g) in failing to give effect to the principle that the deception caused by another should not cause disadvantage to the trademark applicant; (h) in finding that there would be confusion if the “Diesel” trademark of Diesel Italy were put on the register; (i) in failing to permit the applications of Diesel Italy to proceed to registration; (j) in refusing to allow the applications of Diesel Italy to proceed to registration on the basis that they offended against s. 19 of the of the Trademark Act 1963; and (k) in failing to apply the correct test about the determination of the compliance of the applications with the requirements of ss. 2, 19 and 25(1) of the 1963 Act. Diesel Italy sought an order setting aside the decision of the Controller to refuse Diesel Italy’s trademark application and an order permitting its trademark application proceed to registration.

Held by Cregan J that: (1) Diesel Italy was the originator, owner and proprietor of the mark “Diesel”; (2) Diesel Ireland had dishonestly and wrongfully copied Diesel Italy’s mark in Ireland since 1979; (3) there would be confusion and deception within the meaning of s. 19 of the 1963 Act if both marks were to continue to be used in Ireland – however that confusion and/or deception was caused by the dishonest, wrongful and unlawful copying of the mark by Diesel Ireland; (4) Diesel Ireland could not rely on its dishonest, wrongful and/or unlawful acts of copying to argue that there would be confusion or deception in the market place when it was the cause of that deception by virtue of its dishonest, wrongful or unlawful acts – that would be to allow Diesel Ireland to profit from its own wrongdoing.

Cregan J held that the court would fashion an appropriate remedy by way of injunction to restrain the unlawful use by Diesel Ireland of the mark “Diesel”. He held that such remedy would remove all risk of confusion and/or deception. He found that there were no reasons why he should exercise his discretion under s. 25(2) of the 1963 Act to refuse registration of the mark “Diesel” to Diesel Italy. He held that Diesel Italy was entitled to register its mark “Diesel” as a trademark in Ireland. He held that he would hear the parties further on the issue of the remedy and costs.

Appeal allowed.

JUDGMENT of Mr. Justice Cregan delivered on the 8 th day of December, 2023

TABLE OF CONTENTS

INTRODUCTION

PAGE 3

BACKGROUND

PAGE 3

THE FIRST APPLICATION FOR REGISTRATION

PAGE 4

THE SECOND APPLICATION FOR REGISTRATION

PAGE 5

GROUNDS OF APPEAL

PAGE 5

LEGAL PRINCIPLES APPLICABLE TO SUCH APPEAL

PAGE 6

THE CENTRAL ISSUES IN THESE PROCEEDINGS

PAGE 7

RELEVANT SECTIONS OF THE 1963 ACT

PAGE 8

THE MEANING OF PROPRIETOR UNDER COMMON LAW

PAGE 8

FUNDAMENTAL ISSUE

PAGE 10

THE CHAIN OF TITLE ISSUE

PAGE 11

WHETHER DIESEL IRELAND HAS A BONA FIDE CLAIM TO OWNERSHIP

PAGE 12

i. The evidence in the first application

Page 13

ii. Allegations that Diesel Ireland is not bona fide owner of the mark

Page 13

iii. Diesel Ireland's reply

Page 14

iv. Diesel Italy's rejoinder

Page 15

v. The High Court proceedings in the first application

Page 16

vi. Supreme Court decision in the first application

Page 18

vii. The issue of res judicata

Page 19

viii. Henderson v. Henderson

Page 22

ix. The allegations of dishonesty and/or lack of good faith made in the second application

Page 23

x. Mr. Heery's first statutory declaration in the second application

Page 24

xi. Mr. Rosso's replying statutory declaration

Page 25

xii. Mr. Heery's reply

Page 27

xiii. The issue of legal advice given in the first set of proceedings

Page 31

xiv. Statutory declaration of Patrick McKenna

Page 33

xv. The oral evidence of Patrick McKenna

Page 33

xvi. Admissibility of Mr. McKenna's evidence/the rule against hearsay

Page 36

xvii. The rule against hearsay

Page 36

xviii. What weight is to be given to the rest of Mr. McKenna's evidence

Page 39

xix. Clear error of fact in Mr. McKenna's evidence

Page 40

xx. Credibility of Mr. McKenna

Page 41

xxi. Conclusion — no bona fide claim to ownership

Page 42

THE OTHER CENTRAL ARGUMENT OF DIESEL IRELAND

PAGE 44

i. The argument

Page 44

ii. The relevant case law

Page 45

iii. Al Bassam

Page 54

iv. Cases under EU Directives and Regulations

Page 56

v. Conclusion — Diesel Ireland is not the owner of the mark

Page 57

DIESEL ITALY IS THE PROPRIETOR

PAGE 58

THE ISSUE OF CONFUSION

PAGE 58

DISCRETION

PAGE 60

CONCLUSIONS

PAGE 60

INTRODUCTION
1

. This is an appeal by Diesel S.P.A. against a decision of the Controller of Patents, Designs and Trademarks, (hereinafter referred to as “the Controller”), dated 10 th September, 2013 upholding the opposition of Montex Holdings Ltd to the registration by the plaintiff, Diesel S.P.A., of the trademarks DIESEL and DIESEL (DEVICE) in respect of clothing, footwear and headgear.

BACKGROUND
2

. The plaintiff is a company incorporated under the law of Italy. It is the owner of the trademark “Diesel” throughout many countries in the EU and is also the applicant for registration of “Diesel” on the Irish register of trademarks. It manufactures and sells clothing – particularly jeans — under the brand name “Diesel”. It first began to sell its goods under this brand name in Italy and in a number of other European countries in 1978. It first began to sell its jeans in Ireland in 1982. For ease of reference, I will refer to this company as “Diesel Italy” in this judgment.

3

. The second defendant is a company incorporated under the laws of Ireland with its registered office in County Monaghan. The second named defendant also manufactures jeans and uses the name “Diesel” on these jeans. It is opposed to the plaintiff's application for registration of the Diesel trademark. I will refer to this company as “Diesel Ireland” in this judgment. Diesel Ireland first began to manufacture jeans in Ireland with the name Diesel in late 1979/early 1980.

4

. There is a complex history in relation to the conflict between these two companies over the brand name “Diesel” which goes back over 30 years to 1992.

5

. On 18 th September, 1992 Diesel Ireland applied to the Controller to register the word “Diesel” as a trademark (“the Diesel Ireland application”).

6

. On 15 th December, 1993, the Diesel Ireland application was accepted by the Controller and advertised.

7

. On 11 th January, 1994, Diesel Italy applied to register the trademarks “Diesel” and “Diesel (Device)” in Ireland.

8

. On 19 th September, 1994 Diesel Italy opposed the registration by Diesel Ireland on the grounds that it was likely to lead to confusion with its products and constituted an attempt to dishonestly take its trademark. Likewise, Diesel Ireland opposed the registration by Diesel Italy of its mark.

9

. As the Diesel Ireland application was first in time it was considered first and the Diesel Italy application was put on hold.

THE FIRST APPLICATION FOR REGISTRATION – THE DIESEL IRELAND APPLICATION
10

. On 22 nd April, 1998, the Controller considered the Diesel Ireland application for registration but rejected it. He upheld the opposition of Diesel Italy. In his written statement dated 1 st July, 1998, the Controller held that the proposed registration by Diesel Ireland failed to meet the requirements of s. 19 of the Trademark Act, 1963 (the “1963 Act”) on the grounds that Diesel Ireland had...

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