Montex Holdings Ltd v Controller of Patents, Designs and Trade Marks

• Jurisdiction: Ireland
• Judge: O'Sullivan J.
• Judgment Date: 14 January 2000
• Neutral Citation: [2000] IEHC 3
• Court: High Court
• Docket Number: [1998 No. 582 Sp.]
• Date: 14 January 2000

[2000] IEHC 3

THE HIGH COURT

1998 No. 582

MONTEX HOLDINGS LTD v. CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS AND DIESEL S.P.A.

IN THE MATTER OF THE TRADEMARKS ACT, 1963 AND

IN THE MATTER OF THE TRADEMARKS ACT, 1996 AND

IN THE MATTER OF AN APPLICATION PURSUANT TO THE

TRADEMARKS ACT, 1963 BY MONTEX HOLDINGS LIMITED DATED 18th

SEPTEMBER 1992 FOR REGISTRATION OF DIESEL AS A TRADEMARK

IN CLASS 25 OF THE REGISTER OF TRADEMARKS

BETWEEN

MONTEX HOLDINGS LIMITED

PLAINTIFF

AND

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS AND DIESEL S.P.A.

DEFENDANTS

Citations:

TRADE MARKS ACT 1963 S19

RSC O.94 r48

COURTS OF JUSTICE ACT 1936 S38(2)

SCARSON V MCGUIRE 1953 87 ILTR 200

ALBASSAM TRADEMARK, IN RE 1995 RPC 511

NICHOLAS & SONS LTD, IN RE 1931 48 RPC 227

TRADE MARKS ACT 1963 S15

TRADE MARKS ACT 1963 S20

GEC V GE CO LTD 1972 2 AER 507

BERLEI (UK) V BALI BRASSIER INC 1969 2 AER 812

SMITH HAYDEN & CO LTD, IN RE 1945 63 RPC 97

TRANSFERMATIC TRADEMARK, IN RE 1966 RPC 568

TRADE MARKS ACT 1938 S11 (UK)

TRADEMARK REGISTRATION ACT 1875 S10

NEW SOUTH WALES DAIRY CORP V MURRAY GOULBURN CO-OP CO LTD 1990 24 FCR 370

NETTLEFOLD ADVERTISING PTY LTD V NETTLEFOLD SCIENCE PTY LTD 38 IPR 493

COCA-COLA CO V F CADE & SONS LTD 1957 IR 196

PJ CARROLL & CO V PHILIP MORRIS INC 1970 IR 115

LA CHEMISE LACOSTE SA V CONTROLLER OF PATENTS DESIGNS & TRADEMARKS 1978 ILRM 8

SEVEN-UP V BUBBLE UP 1990 ILRM 204

HOWARD V COMMISSIONER OF PUBLIC WORKS 1994 1 IR 101

MAXWELL ON INTERPRETATION OF STATUTES 12ED 28

R V BANBURY (INHABITANTS) 1834 1 AD & EL 136

CAPPER V BALDWIN 1965 2 QB 53

DAVIES JENKINS & CO LTD V DAVIES 1967 2 WLR 1139

Synopsis

Intellectual Property

Intellectual property; trademarks; plaintiff appealing decision of defendent who had refused registration of a trademark; whether the plaintiff's propsed use of the trademark was bona fide; whether the defendent was correct in holding that the use of the same word on the same type of garment in the same market would raise the likelihood that a substantial number of persons would be confused; whether, where it is established that use of a trademark would involve confusion or deception, an element of blameworthiness must also be established to disentitle the party seeking registration of such; s.19, Trademarks Act, 1963.

Held: Appeal dismissed.

Montex Holdings Ltd. v. The Controller of Patents, Designs and Trademarks - High Court: O'Sullivan J. - 14/01/2000 - [2000] 1 IR 577 - [2000] 1 ILRM 481

The applicant (Montex Holdings) had attempted to register the trademark "Diesel" in respect of items of clothing. The second defendant (Diesel S.P.A.) had objected to the registration. The Controller of Patents had refused the application primarily on the basis that the use of the mark by the applicant would cause deception and confusion amongst a substantial number of persons. The applicant appealed the decision of the Controller to the High Court. O'Sullivan J held that the registration of a trademark would be refused where its registration would be likely to cause confusion or deception. There was no need to prove an additional element of blameworthiness for the registration to be refused. Accordingly the decision of the Controller declining to permit the registration of the trademark in question was upheld and the appeal was dismissed.

1 O'Sullivan J. delivered the 14th day of January 2000.

INTRODUCTION

2 The Plaintiff (hereinafter "the Applicant") applied to the First Defendant (hereinafter "the Controller") on the 18th of September 1992 to register the word "DIESEL" as a trademark in part A of the Register of Trademarks for use in connection with jeans, articles of outer and under clothing, headwear, scarves and footwear.

3 The Second Defendant (hereinafter "the Opponent") filed Notice of Opposition on the 19th of September 1994 which became the subject of a hearing before the Controller on the 23rd of March 1998.

4 On the 22nd of April 1998 the Controller notified the parties that he decided to uphold the Opposition and refuse registration of the mark and by written decision dated the 1st of July 1998 the Controller set out the grounds of his decision and the evidence produced to him.

5 The Applicant appealed by Special Summons dated the 27th of August 1998 which was grounded on an Affidavit of Michael Heery. In addition an Affidavit has been filed in these proceedings by the Controller.

6 At the hearing before the Controller the Opponent criticised a number of the statutory declarations filed on behalf of the Applicant for want of correct form; they alleged that the Applicant failed to show that they were the owners of the mark and further alleged that the Applicant failed to show that registration would not be likely to cause confusion so that the mark should not be registered given that the onus lay on the Applicant to satisfy the Controller on this point.

7 The Applicant, for their part, claimed that the Opponent failed to show a sufficient user by them of the mark in this country to give them standing as Opponents.

8 The Controller decided that the want of form in the statutory declarations was a minor technical error which could be overlooked. He held, further, that the Applicant had established as a matter of probability that they were the owner of the mark; further, that the Opponent had established a sufficient user to entitle them to oppose and he further held that the use of the mark would no doubt cause deception and confusion amongst a substantial number of persons because an identical mark is being used for essentially the same goods in the same class. Accordingly, the Controller upheld the Opposition and refused the registration stating that the mark proposed fails to meet the requirements of Section 19 and also that the refusal was in exercise of the discretion conferred on him by the Act.

9 The Applicant appealed this decision insofar as it found that the mark failed to meet the requirements of Section 19 and also insofar as the refusal was based on the Controller's discretion.

10 Prior to the hearing, the Solicitors for the Opponent wrote to the Applicant's Solicitors stating that they intended to raise all issues in the appeal which had been opened before the Controller.

11 The right of the Opponent so to do was challenged by the Applicant before me.

12 In this connection the Opponent relied on Order 94 Rule 48 of the Rules of the Superior Courts which so far as relevant specifies that: "Every such appeal to the Court shall be by way of rehearing..".

13 In response the Applicant referred to Section 38(2) of the Courts of Justice Act, 1936which is in similar terms but submitted that an Appellant had a right to limit the ambit of an appeal and referred to Scarson -v- Maguire (Irish Law Times Reports: Volume page 200) where O'Byrne J., held that where a defeated Defendant appealed only his counterclaim, he was estopped from pleading that he was not guilty of negligence as the decree on the claim against him constituted an estoppel on the record. The learned judge did, however, extend time to serve notice of appeal as regards that decree.

14 All issues were fully opened and argued before me and I made it clear in the course of the hearing that I was prepared to permit the Opponent raise all issues which were canvassed before the Controller.

FACTS

THE APPLICANT'S USER

15 (1) Michael Heery said he was the managing director of the Applicant which, together with its predecessor in title, had used the mark in respect of goods for which the registration was sought, and in particular on jeans, since 1979 throughout the State. He exhibited a list of retailers who sell the DIESEL jeans of the Applicant's he exhibited samples of the trademark as applied to the Applicant's goods and gave turnover figures ranging from £22,411.00 in 1989 to £49,973.00 in 1992.

16 He explained that the mark was first owned by Monaghan Textiles Limited of which company he was also a director. The mark was used by that company and another, Banner of Ireland Limited, both of which companies were subsidiaries of Beon Investments Limited which in 1982 was acquired by Mitzi Limited. Banner subsequently changed its name to Mitzi Monaghan Limited.

17 The Applicant acquired the mark and attached goodwill from the Receiver of Monaghan Textiles Limited which had gone into receivership on the 10th of February 1988. He exhibitedsomeinvoicesin respect of purchases of raw materials for DIESEL jeans predating the 10th of May 1982 (being the date of first use in Ireland claimed by the Opponent) and also some invoices in respect of sales of DIESEL jeans which, again, predate the Opponent's first claimed use.

18 (2) Martin Ferris was a former partner of the Receiver, Hugh Cooney, who negotiated the sale of the assets of Monaghan Textiles Limited to the Applicant and whilst no documentation of the sale was available, he did recall "certain...transactions pertaining to the sale of goodwill, stocks, trimmings, patterns, trademarks and the database of the company were sold;... on foot of the contract for sale or by invoice ".

19 (3) Statutory declarations were made by five ex-employees of Montex Holdings Limited stating that they had been employed by the company from various dates each of which ante-dated the incorporation of that company and declaring that "we" had been selling jeans under the brand name DIESEL to the general public since 1979.

20 (4) Gerry McGirr made a statutory declaration to the effect that he was a clothing retailer and wholesaler in the Irish Market since 1980 and had been purchasing jeans from Montex Holdings Limited and Monaghan Textiles Limited under the brand name DIESEL since 1980 and they had been sold by him on the Irish Market since 1981.

21 (5) A similar declaration was made by Martin McCormack.

22 (6) Finally, in an Affidavit grounding the Special Summons,...