The Supreme Court has rejected Montex Holdings Limited’s attempt to register DIESEL as an Irish trade mark for clothing, upholding a finding that its use was likely to cause confusion with the mark used by Italian clothing company Diesel S.p.A.
Montex had applied in September 1992 to register DIESEL in class 25 of the trade marks register. It relied on evidence that its predecessor, Monaghan Textiles Limited, and an associated company had sold jeans under the DIESEL name in Ireland since 1979. Montex later acquired the mark and associated goodwill after Monaghan Textiles went into receivership in 1988.
Diesel S.p.A. opposed the application. It said it had used DIESEL internationally since 1978 and had sold clothing under the mark in Ireland since at least 1982. Evidence before the Controller included invoices and statements concerning sales through Irish retailers.
The Controller refused registration in 1998, finding that Diesel S.p.A. had acquired a sufficient reputation in Ireland before Montex’s 1992 application and that use of the same mark for essentially the same goods was likely to cause confusion. The High Court later upheld the refusal.
The central issue before the Supreme Court was legal rather than factual. Montex argued that likelihood of confusion alone was not enough under section 19 of the Trade Marks Act 1963 and that some additional element of blameworthy conduct had to be shown.
Mr Justice Geoghegan rejected that interpretation. He distinguished cases concerning the later removal of an already registered mark from cases involving an application for first registration. For an initial application, he held, proven likelihood of deception or confusion can itself require refusal. There is no additional requirement to establish passing off, dishonesty or similar blameworthy behaviour.
The court found there had been ample evidence supporting the conclusion that confusion was likely. The appeal was therefore dismissed, leaving the refusal to register DIESEL in place.