The High Court has ruled that Diesel S.P.A. is the proprietor of the “Diesel” trademark in Ireland and is entitled to register it for clothing, footwear and headgear. The court found, on the balance of probabilities, that Montex Holdings Ltd, referred to in the judgment as Diesel Ireland, copied the mark and had not established a bona fide claim to ownership.
The decision, delivered by Mr Justice Cregan on 8 December 2023, concerns Diesel Italy’s appeal against the Controller of Patents, Designs and Trademarks’ refusal of its 1994 applications for “Diesel” and “Diesel (Device)”. The Controller had upheld Diesel Ireland’s opposition, finding that Diesel Italy was not the proprietor and that registration would risk confusion under section 19 of the Trade Marks Act 1963.
A central issue was how Diesel Ireland came to use the name. Its director Patrick McKenna said a colleague, Gene McKenna, suggested “Diesel” in 1978 after seeing the word on a nearby filling station sign. The judge excluded evidence of what Gene McKenna had said as hearsay: he was deceased and could not be cross-examined. The court also gave little or no weight to the remaining evidence from Patrick McKenna, noting that it was uncorroborated, unsupported by documents and wrong about the year Diesel Ireland began using the mark. Other company evidence put its first use on jeans in 1979, with the first exhibited sales invoice dated February 1980.
The judge found that Diesel Italy had originated the mark and used it in Italy and other European countries from 1978. He concluded that the matching mark and product, alongside the lack of a credible explanation for Diesel Ireland’s adoption of the name, supported the finding of copying. The court also rejected Diesel Ireland’s argument that being the first user in Ireland gave it ownership regardless of how it adopted the mark.
The court accepted that simultaneous use of the identical marks would likely cause confusion. It held, however, that Diesel Ireland could not rely on confusion caused by its own copying to defeat Diesel Italy’s application. It found no basis to exercise its discretion to refuse registration under section 25(2).
The court concluded that Diesel Italy was entitled to register “Diesel” in Ireland. It said an appropriate injunction would be fashioned to restrain Diesel Ireland’s use of the mark, but did not specify the terms of that injunction in this judgment. The parties were to be heard further on the remedy and costs.