The Court of Appeal has ruled that Diesel S.p.A. cannot introduce additional evidence in its appeal over the refusal of its application to register the DIESEL trade mark for clothing, footwear and headgear.
In a judgment delivered by Mr Justice Gerard Hogan on 2 October 2018, the court allowed an appeal by the Controller of Patents, Designs and Trade Marks. It overturned a High Court decision that had granted Diesel leave to submit further evidence. The court refused leave for that evidence to be admitted. It did not determine whether Diesel’s trade mark should be registered.
The registration application was made in January 1994 and opposed by Montex Holdings Ltd. The Controller refused it in April 2013, upholding Montex’s opposition. Diesel appealed and later sought to add material to address gaps identified by the Controller, including better copies of invoices, new invoices, magazine advertisements and circulation evidence, and affidavits about sales and reputation in Ireland before 1994. The proposed evidence also included material seeking to disprove sales of Montex-branded goods in Ireland during that period.
The Controller had criticised Diesel for not providing more evidence of Irish sales, including invoices and evidence about the circulation of magazines said to have carried its advertisements. The High Court applied a more lenient test used in an English trade mark case and granted Diesel leave to add evidence. The Controller appealed that decision.
The Court of Appeal held that the stricter principles set out by the Supreme Court in Murphy v Minister for Defence governed applications to introduce new evidence in this type of appeal. Under those principles, evidence must, among other things, be material that could not have been obtained with reasonable diligence for the original hearing.
The court relied on the High Court judge’s findings that the proposed evidence could have been gathered and filed earlier, apart from some invoices dated 14 January 1994, for which there were later opportunities to provide them. No explanation had been given for the delay. The court also said the question of Diesel’s use of the mark before 1994 had been central to the dispute, so Diesel could not claim surprise.
The judgment criticised the extensive delays in the proceedings, which began before the Controller in 1994. It said there must be no further delay in processing the appeal before the High Court. The Court of Appeal’s decision concerned only the admission of additional evidence; the underlying registration dispute remained to be dealt with.