The Supreme Court has dismissed Diesel S.P.A.’s appeal over its attempt to introduce additional evidence in a trademark registration dispute with Montex Holdings Limited. It held that the Murphy test applies to applications for new evidence in appeals from the Controller of Patents, Designs and Trademarks, and that Diesel had not met its first requirement.
The dispute concerns competing claims to the “DIESEL” trademark in Ireland. Diesel appealed the Controller’s refusal of its 1994 application to register the mark. In 2012, the Controller upheld Montex’s opposition, including on the basis of a likelihood of confusion, and criticised Diesel for not providing more evidence about its sales in Ireland.
Diesel then sought special leave to put further material before the High Court. The proposed material included advertisements, magazine circulation figures, invoices and affidavits. In 2016, the High Court allowed some of it. The Court of Appeal later overturned that decision, finding that none of the proposed new evidence should be admitted. Diesel appealed to the Supreme Court.
In a judgment delivered by Irvine J. on 19 March 2020, the Supreme Court said an appeal under section 57 of the Trade Marks Act 1963 allows the High Court to reach its own conclusions and substitute its decision for the Controller’s. But it is not a fresh hearing: the High Court is generally confined to the evidence before the Controller unless it grants special leave for further material.
The Court rejected Diesel’s argument that the more flexible approach in the English Hunt-Wesson case should apply. It held that the Murphy test governs, while retaining limited flexibility where exceptional circumstances or the interests of justice require it. The test requires that evidence already in existence at the time of the original hearing could not have been obtained with reasonable diligence; that it would probably have an important influence on the result; and that it is apparently credible.
The High Court had found that Diesel’s proposed evidence was available, or could have been obtained, for the Controller’s hearing, and no adequate explanation had been given for the delay. The Supreme Court also rejected Diesel’s claim that the Controller’s decision amounted to an unexpected turn in the hearing. It said surprise at the outcome was not the kind of unexpected event that could excuse the failure to produce available evidence earlier.
Because Diesel failed the first part of the Murphy test, the Court said it did not need to consider the proposed evidence against the other two requirements. It dismissed the appeal, leaving the Court of Appeal’s decision in place. The Supreme Court did not decide the underlying registration dispute in this appeal.