The Court of Appeal has ruled that Italian clothing company Diesel SpA cannot register its "Diesel" trademarks for jeans in Ireland, allowing appeals by Montex Holdings Limited and the Controller of Patents, Designs and Trade Marks.
The decision is the latest stage of a dispute stretching back more than three decades. Montex, an Irish company with a registered office in Monaghan, applied to register "Diesel" in 1992. Diesel SpA, which began selling clothing under that name in Italy and elsewhere in Europe in 1978 and first sold jeans in Ireland in 1982, applied to register "Diesel" and a related device mark in January 1994.
Montex's own registration bid was ultimately rejected because registration would cause confusion. However, an earlier High Court judgment had also found that Montex, through first use in Ireland, was proprietor of the mark for the purposes of the Trade Marks Act 1963.
In 2013 the Controller refused Diesel SpA's applications. The High Court later overturned that decision, finding that Diesel SpA originated the mark and that Montex had wrongfully copied it. Although the High Court accepted that registration would cause confusion, it held that Montex should not benefit from confusion generated by its own conduct.
Ms Justice Hyland, delivering the Court of Appeal judgment, rejected that approach. She held that the earlier finding that Montex was proprietor was res judicata, meaning it had already been conclusively determined between the parties and could not be reopened.
The court also held that section 19 of the 1963 Act made refusal mandatory where registration was likely to deceive or cause confusion. Alleged dishonesty or wrongful conduct by the opposing party was irrelevant to that statutory test.
Because all parties accepted that confusion would result if Diesel SpA's marks were registered, the court allowed the appeals and confirmed the Controller's refusal of applications 177240 and 177245. Costs and the precise form of the final order were left for further consideration.