About this case:

• Citation:
  [2025] IECA 211
• Judgment:
  External link
• Court:
  Court of Appeal
• Judge:
  Ms Justice Niamh Hyland

Delivering judgment for the Court of Appeal, Ms Justice Niamh Hyland concluded: “The position is clear: all parties accept there will be confusion if Diesel SpA’s mark is registered. Section 19 makes refusal of registration mandatory where confusion will result.”

Background

The plaintiff Italian clothing company (Diesel) manufactured and sold jeans and other items under the brand name “Diesel” in Italy and in other European countries from 1978. The plaintiff first sold jeans in Ireland in 1982.

On 18 September 1992, the appellant Irish company (Montex) applied to the Controller of Patents, Designs and Trademarks to register the word “Diesel” as a trademark in respect of jeans manufactured by its predecessor since late 1979.

Diesel subsequently applied to register the trademarks “Diesel” and “Diesel (Device)” in Ireland in January 1994 and registered their opposition to Montex’s registration on the basis that same would lead to confusion with its products and was an attempt by Montex to dishonestly take its trademark. Montex similarly opposed Diesel’s application.

Montex’s application was rejected in 1998 as it had failed to establish that there was no likelihood of deception or confusion with Diesel’s offerings, thus failing to meet the requirements of the Trade Marks Act 1963.

Montex unsuccessfully appealed to the High Court, with Mr Justice Philip O’Sullivan finding that Montex had failed to demonstrate that its proposed use of the mark was bona fide and that the mark was likely to cause confusion. The ruling in respect of the confusion finding was later upheld by the Supreme Court.

In 2013, the Controller upheld Montex’s opposition to Diesel’s trademark applications 177240 and 177245, while allowing Diesel’s other applications to proceed to registration. The Controller determined that Diesel was not the proprietor of the trademark and that there would be confusion if Diesel’s mark was allowed on the register.

Diesel appealed to the High Court against that decision, with Mr Justice Brian Cregan finding that Diesel was entitled to register applications 177240 and 177245 as it was the proprietor of the marks and accepting that confusion would arise, but that this was due to Montex wrongfully copying Diesel’s mark since 1979 and that confusion could not prevent registration where it was caused by wrongful conduct.

Montex appealed against the High Court’s decision to the Court of Appeal.

Grounds of appeal

Montex contended inter alia that the issue of proprietorship was res judicata having regard to the earlier decisions of the High Court and the Supreme Court in Montex Holdings Limited v. The Controller of Patents, Designs and Trade Marks and Diesel SpA [2000] 1 IR 577 and [2003] 3 IR 85 and that the High Court erred in finding that the issue of Montex’s bona fide use of the trademark was not conclusively decided in the earlier proceedings and erred in allowing new evidence on that issue.

Montex also raised grounds of appeal concerning inter alia whether deceptive or dishonest conduct by an opposition party is determinative in relation to the bar to registration under s.19 of the 1963 Act and the assessment of evidence by the High Court.

The Court of Appeal

In respect of the res judicata issues, the Court of Appeal observed that Mr Justice O’Sullivan had determined that Montex, as first user in the State, was the proprietor within the meaning of s.25(1) of the 1963 Act and having considered the evidence in relation to the allegation that Montex was not the bona fide proprietor, had concluded that he was not satisfied that the proposed user of the mark was bona fide and on that ground, would refuse permission for the proposed registration “which possibility is provided for under s.25(2)”.

Noting that Mr Justice O’Sullivan’s subsequent conclusions on bona fides and lack thereof were characterised as an exercise of the discretion conferred by s.25(2) by the Supreme Court, the Court of Appeal could not agree with Mr Justice Cregan that Mr Justice O’Sullivan’s decision was unclear on the question of proprietorship where there was “an identity of subject matter and of parties: in both the first set of proceedings and these proceedings, the same parties were asking the same question: which of them was the proprietor of the mark”.

Noting that there was no explicit engagement with the question of proprietorship in the Supreme Court, Ms Justice Hyland expressed that “in my view the decision of the Supreme Court is premised on an acceptance of the High Court’s finding that Montex was the proprietor… If the Supreme Court had not accepted that Montex was the proprietor, there would have been no reason to engage with s.19.”

Accordingly, the Court of Appeal determined that the doctrine of res judicata required Mr Justice Cregan to find that Montex was the proprietor of the mark, a matter which had been decided in Montex’s favour by Mr Justice O’Sullivan and which had been accepted by the Supreme Court.

As to whether the trial judge was correct to conclude that the question as to whether Montex had engaged in a bona fide use of the trademark had not been conclusively decided in the first set of proceedings, Ms Justice Hyland considered it unnecessary to determine that point as her decision on proprietorship being res judicata determined the appeal.

As to whether Mr Justice Cregan was “required to reject as an abuse of process the adducing of further evidence on this issue in these proceedings”, Ms Justice Hyland explained:

The Court of Appeal declined to consider further questions of alleged copying or wrongful conduct by Montex and the effect of same on Diesel’s application for registration on the basis that their determination was unnecessary, given that the Supreme Court had unequivocally concluded that confusion within the meaning of s.19 of the 1963 Act “prevents registration, irrespective of whether there is blameworthy conduct or not”.

Noting that Mr Justice Cregan had accepted that confusion would result from registration, the Court of Appeal determined that it thus was not open to the High Court to permit registration of Diesel’s mark on the basis of Montex’s conduct or blameworthiness, where same was irrelevant to the application of s.19.

Conclusion

Accordingly, the Court of Appeal allowed Montex’s appeal and indicated that it would confirm the decision of the Controller in respect of the opposition to trademark applications 177240 and 177245.

Diesel SpA v The Controller of Patents, Designs and Trademarks and Montex Holdings Ltd [2025] IECA 211