The High Court has allowed Diesel S.p.A. to introduce some additional evidence in its appeal against the refusal of its Irish trade mark applications, but excluded two affidavits and did not decide whether the marks should be registered.
In a judgment delivered on 9 June 2016, Mr Justice Binchy granted leave for additional invoices, advertisements, magazine circulation material, two letters about advertising, evidence from a former distributor and public records concerning the parties. The application was about what evidence could be used at the appeal hearing; it did not determine the appeal’s merits.
The appeal concerns the Controller of Patents, Designs and Trademarks’ refusal of applications to register DIESEL word and device marks for clothing, footwear and headgear in class 25. Montex Holdings Ltd. had opposed the applications. The judgment’s chronology says the Controller refused them on 4 April 2013; Diesel appealed on 7 November 2013 and applied to introduce further evidence on 24 February 2014.
Diesel said the additional material addressed gaps identified by the Controller, including the limited evidence of sales and advertising in Ireland. The proposed material included invoices, magazine advertisements and circulation information, as well as affidavits about Irish sales and the parties’ use of the mark. Montex and the Controller objected, arguing, among other things, that much of the material could have been filed earlier and that some testimony would be difficult to answer after the passage of time.
The judge applied the factors set out in the English Hunt-Wesson trade mark case. He found the proposed evidence was available, or could have been obtained, earlier and that Diesel had given no explanation for not filing it. But he also considered the dispute’s focus on the parties’ use of the mark and the potential value of some of the proposed evidence to the rehearing.
The court admitted the additional invoices and advertisements, material about magazine circulation, letters dated 4 December 1995 from magazine representatives, and the affidavit evidence of Simon Cutting, whom Diesel identified as a former distributor. It also allowed public documents comprising Diesel’s Italian trade mark registration and Montex’s certificate of incorporation.
The judge refused to admit the affidavits of Stefano Lesurum and Edmund Shanahan. He described Lesurum’s statements about Diesel’s reputation in Ireland as general and hearsay based, while permitting exhibits to Lesurum’s affidavits that had already been allowed. He found Shanahan’s recollections of the earlier clothing market could have been obtained closer to the relevant period and that admitting the affidavit would prejudice Montex. The judge said Montex could test Cutting’s evidence by cross-examination at the appeal hearing.
The judgment leaves the underlying registration dispute for the appeal hearing. It also records an earlier finding in related proceedings that Montex had shown sufficient prior use to have a prima facie entitlement to registration, but had failed in its earlier application on other grounds.