The Court of Appeal has confirmed the refusal of two applications by Diesel S.p.A. to register DIESEL trade marks and has ordered the company to pay the legal costs of Montex Holdings Limited.
The ruling, delivered on 8 December 2025, was a supplemental judgment dealing with costs and the precise form of the order following the court’s principal judgment of 28 October 2025.
The dispute concerns trade mark applications numbers 177240 and 177245, lodged by Diesel in January 1994 for registration of DIESEL and a DIESEL device mark in Class 25.
Montex had succeeded in its appeal against High Court orders concerning the Controller of Patents, Designs and Trade Marks’ refusal to register the marks. In the supplemental judgment, Ms Justice Hyland held that Montex was therefore entitled to recover its costs of the High Court proceedings and the Court of Appeal, including reserved costs, with the amount to be adjudicated if the parties could not agree it.
The Controller did not seek an order for his own costs.
A further dispute concerned how the final order should describe the basis on which the Controller’s decision was being confirmed. Diesel proposed wording focused solely on section 19 of the Trade Marks Act 1963, concerning confusion.
Montex argued that the appeal had also succeeded on proprietorship. The Court of Appeal agreed that limiting the order to the section 19 issue would fail to reflect the full judgment. The court had concluded that proprietorship had already been determined by an earlier High Court decision which held that Montex was proprietor of the marks.
The final proposed order therefore simply allows the appeal from the High Court judgments and confirms the Controller’s refusal of both trade mark applications without restating all of the court’s reasoning.
Because Diesel also lost the arguments made after the principal judgment concerning costs and the form of the order, Montex was awarded its further costs incurred in that stage as well.