Diesel brand name dispute: no new evidence to be admitted

No new evidence can be admitted in a lengthy trademark dispute between an Irish company and an Italian firm over the fashion brand name Diesel, the Supreme Court has ruled.

The dispute is between Irish-registered Montex Holdings Ltd and Italian fashion designer Diesel SPA over the use of the Diesel name on clothes sold in this country. It has gone on for more than quarter of a century.

In what was described by the Supreme Court as “protracted litigation”, the dispute goes back to 1992, when Montex’s predecessor attempted to have the Diesel trademark registered in its name. Diesel SPA objected.

The Controller of Patents Designs and Trademarks, while saying Montex had sufficient title to the trademark, upheld Diesel SPA’s objection on the basis there would be confusion in the market if Diesel were to be registered as owner in the Irish market.

Montex appealed to the High Court, which upheld the controller's decision.

In 1994, Diesel SPA also attempted to have the trademark registered in its name here. Montex objected but a hearing before the controller in relation to this did not take place until 2012.

This 18-year delay, described as “egregious” by the Supreme Court, was partly due to Montex’s appeal to the High Court and to a pre-hearing process in which both parties filed evidence and then replied to each other’s evidence with further evidence.

In May 2012 the controller refused Diesel SPA’s application for registration because of the Italian firm’s failure to provide more evidence about the extent of its sales in Ireland.

High Court erred

Diesel appealed that decision to the High Court, which in 2016 decided some of the new evidence Diesel SPA now wanted to bring in should be admitted for the purpose of determining the matter.

That High Court decision was appealed to the Court of Appeal, which in 2018 found the High Court erred in law in admitting the new evidence.

Diesel SPA then got a further appeal in the Supreme Court because it was a matter of general public importance that warranted further consideration and clarity.

On Thursday, Ms Justice Mary Irvine, on behalf of a five-judge Supreme Court, dismissed the further appeal.

She said both law and existing practice permit departures from the general rule, which allows fresh evidence to be admitted in a case where it is “necessary in the interests of justice”.

The Court of Appeal did not apply an incorrect test when it decided no new evidence could be admitted in this case, she said.

She was satisfied the Court of Appeal was correct to conclude Diesel SPA “had established no unexpected turn of events or anything sufficiently special or exceptional” that might meet the legal test to depart from the rule governing the admission of new evidence.