Diesel SpA v The Controller of Patents Designs and Trade Mark and Another

• Jurisdiction: Ireland
• Court: Court of Appeal (Ireland)
• Judge: Ms. Justice Hyland
• Judgment Date: 28 October 2025
• Neutral Citation: [2025] IECA 211
• Docket Number: Court of Appeal Record No: 2024 180 & 2024 181

In the Matter of the Trade Marks Act 1963

And in the Matter of the Trade Marks Act 1996

And in the Matter of Applications Number 177240 and 177245

Dated 11 January 1994

Pursuant to the Trade Marks Act 1963

By Diesel SpA for Registration of Diesel and Diesel (Device) as Trade Marks in Class 25 of the Register of Trade Marks

Between/

Diesel SpA

Plaintiff/Respondent

and

The Controller of Patents, Designs and Trademarks

First Defendant/Appellant

and

Montex Holdings Limited

Second Defendant/Appellant

[2025] IECA 211

The President

Allen J.

Hyland J.

Court of Appeal Record No: 2024 180 & 2024 181

High Court Record No. 2013 641 SP

COURT OF APPEAL

JUDGMENT of Ms. Justice Hyland delivered on the 28 day of October 2025

SUMMARY

1 This appeal concerns a long running dispute between an Irish company, Montex Holdings Limited (“Montex”) and an Italian company, Diesel SpA (“ Diesel SpA”), both of whom applied to register the name “Diesel” as a trademark for jeans. Montex applied for registration in 1992, Diesel in 1994. In 2001, in the case of Montex Holdings Ltd v. Controller of Patents [2001] 3 I.R. 85, the Supreme Court upheld the refusal of the Controller of Patents, Designs & Trade Marks (the “ Controller”) to register Montex's application for registration, on the basis that doing so would cause confusion under s. 19 of the Trademarks Act 1963 (the “ 1963 Act”).

2 This appeal concerns a refusal by the Controller to register Diesel's application for registration on the basis that Diesel was not the proprietor of the trademark, and that registration would result in confusion. Diesel appealed against that decision and Cregan J. (the “ trial judge”) in the High Court ( [2023] IEHC 757) decided that Diesel was entitled to register its trademark as it was the originator, owner and proprietor of the mark. The trial judge accepted that confusion would result but held that this arose because Montex had copied Diesel SpA's mark since 1979, and decided confusion could not prevent registration where it was caused by wrongful conduct.

3 Montex have appealed against this judgment. I allow Montex's appeal on the following basis. First, I conclude that the question as to the proprietorship of the mark (although not the question of registration under s. 25(2) under the 1963 Act) was decided by the High Court in Montex's favour by O'Sullivan J. in the case of Montex Holdings Ltd v. Controller of Patents [2000] 1 I.R. 577 and that finding was accepted by the Supreme Court. As such this question is res judicata and ought not to have been revisited by the trial judge. On the other hand, I cannot agree that the trial judge was wrong in admitting new evidence as to Montex's bona fides. The trial judge had discretion to admit such evidence, and its admissibility depended on whether the issue was res judicata. Since the trial judge had not yet ruled on that point when the evidence was introduced, its admission was not improper.

4 I have declined to consider the question of any alleged copying or wrongful conduct by Montex, and the effect of same on the application for registration by Diesel SpA as being unnecessary, given that the Supreme Court in the Montex decision in 2001 unequivocally concluded that confusion under the Act prevents registration, irrespective of whether there is blameworthy conduct or not. Accordingly, it was not open to the trial judge to permit registration of Diesel's mark on the basis of Montex's conduct, given his acceptance that confusion would result from registration. The question of blameworthiness by Montex is irrelevant under s. 19 and therefore Diesel SpA's application must be refused due to the likelihood of confusion.

5 Accordingly, I confirm the Controller's decision to refuse registration of Diesel SpA's applications, with any necessary modifications to that decision to be determined after hearing from the parties.

FACTUAL BACKGROUND

6 These appeals, brought by the Controller and Montex, seek to set aside the order of Cregan J. (the “ trial judge”) in the High Court ( [2023] IEHC 757) annulling the opposition by Montex to Trade Mark Applications 177240 and 177245 made by Diesel SpA and directing that said applications proceed to registration.

7 Diesel SpA is a clothing company incorporated under the law of Italy. It manufactures and sells clothes – including jeans – under the brand name “ Diesel” and began to sell its clothes under this name in Italy and other European countries in 1978. It first sold jeans in Ireland in 1982.

8 Montex is an Irish company with a registered office in Monaghan. Its predecessor manufactures jeans under the name “ Diesel” and began producing them in late 1979.

9 Montex originally applied to the Controller to register the word “ Diesel” as a trademark on 18 September 1992. The application was accepted by the Controller and advertised on 15 December 1993. Diesel SpA applied to register the trademarks “ Diesel” and “ Diesel (Device)” in Ireland on 11 January 1994. In the same year, Diesel SpA registered their opposition to Montex's registration on the basis that it was likely to lead to confusion with its products and was an attempt by Montex to dishonestly take its trademark. Montex similarly opposed Diesel SpA's attempt to register its proposed marks.

10 It having been received first in time, Montex's application was considered by the Controller prior to Diesel SpA's application. The Controller rejected the application on 22 April 1998 on the basis that Montex had failed to establish that there was no likelihood of deception and confusion with Diesel SpA's offerings, thus failing to meet the requirements of the 1963 Act.

11 Montex appealed the Controller's decision to the High Court and the matter was decided by O'Sullivan J. in Montex Holdings Ltd. He refused the registration of the Montex application on the grounds that Montex had failed to demonstrate its proposed use of the mark was bona fide. He also found that the mark was likely to cause confusion under s. 19 of the 1963 Act. The High Court's ruling in respect of the confusion finding was upheld by the Supreme Court in Montex Holdings Ltd v. Controller of Patents, who declined to consider the issue of bona fides on the basis that it was unnecessary to decide same. (In this judgment, these proceedings will be referred to as the “ first set of proceedings”).

12 Once Montex's application had been determined, the Controller turned to Diesel SpA's application for registration, which was opposed by Montex. The Controller reached a decision on 4 April 2013 upholding the opposition in respect of applications 177240 and 177245, while allowing other applications to proceed to registration. Reasons for his decision were given on 9 September 2013: being first, that Diesel SpA was not the proprietor of the trademark; and second, that there would be confusion if Diesel SpA's mark was allowed on the register – such confusion not having been caused by the unlawful purloining by Montex of Diesel SpA's mark.

13 Diesel SpA appealed that decision to the High Court under s. 57 of the 1963 Act. The decision on that appeal is the subject of the appeal to this Court. Under s. 57(5) of the 1963 Act, an appeal shall only lie to this court on a specified point of law. The trial judge gave leave on five questions (see Annex 1 to this judgment).

14 Before considering the judgment of the High Court, and the grounds of appeal, it may be helpful to set out the legislative regime governing the issues in this case. The 1963 Act, and the regime it established, has been entirely replaced by an EU regime, and is no longer the applicable law governing trademarks. Consequently, this judgment, although of great significance to the parties, is unlikely to be relevant to many other people.

LEGISLATIVE REGIME

15 Section 2 of the 1963 Act provides the following definitions:

“‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.”

“‘trade mark’ means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as a registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under s. 45 of this Act.”

16 Section 19 of the Act provides:

“It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of law, or would be contrary to law or morality, or any scandalous design.”

17 Section 20 of the Act relates to the prohibition of registration of similar trademarks, and the doctrine of honest concurrent use.

18 Section 57(1) of the 1963 Act provides a right of appeal to the High Court against any order or decision of the Controller. Section 25(7) sets out the nature of an appeal under s. 57:

(7) Appeals under s. 57 of this Act against decisions of the Controller under this s. shall be heard on the materials stated as aforesaid by the Controller, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Controller, other than those so stated as aforesaid by him, except by leave of the Court.

19 Section 57(1) and (2) provide:

“(1) An appeal shall lie to the Court from any order or decision of the Controller under any provision of this Act (not being a decision of the Controller under s. 11 or subs. (7) of s. 69 of this Act) or from a correction of an error in the register by the Controller under subs. (3) of s. 42 of this Act, and the Court may make such order...