Diesel trade mark feud runs out of fuel after 30-year Irish court battle

The three-judge court ruled a decision by the High Court delivered on 8 December 2023, granting Diesel SpA the rights to the trademark in Ireland, had been taken incorrectly by the judge.

The ruling means neither side will have ownership of the trade mark in Ireland, bringing to a conclusion a battle over the brand name that extends back to the early 1990s.

Diesel SpA had been disputing the usage of the trademark by Irish firm Montex Holdings in the Republic under the previous trade mark legislation – the Trade Marks Act 1963 – with both companies having applied for registration; Montex in 1992, and Diesel in 1994.

Montex’s predecessor had been selling jeans in Ireland under the Diesel name since 1979, with the Italian company entering the country in 1982, having been selling jeans under the brand across Europe since the late 1970s.

Originally Ireland’s Controller of Patents upheld Diesel’s bid to block Montex from registering the trademark in 1998, ruling that the Irish company had not proven it would not cause confusion between its brand and Diesel’s, a decision which was ultimately upheld by the Supreme Court in 2001.

11 years later the Controller of Patents rejected Diesel’s application, due to Montex’s objection, but last year, the Irish High Court agreed Diesel SpA could register the brand. The judge in that instance acknowledged it would create confusion but ruled this was caused by “dishonest, wrongful and unlawful copyright of the mark” by Montex.

Now the Court of Appeal has overturned that ruling (38-page / 381KB PDF), reversing the matter to the previous situation where neither company can legally register the trademark in Ireland.

Ms. Justice Niamh Hyland, writing on behalf of the three-judge court, ruled that the Supreme Court decision had settled the matter ‘irrespective of whether there is blameworthy conduct or not’, and that it was not open to the High Court judge to permit registration of the mark given his acceptance that confusion would result from registration. The Court of Appeal stated that the question of blameworthiness by Montex was irrelevant and so, the application must be refused due to the likelihood of confusion.

Maureen Daly, an intellectual property expert with Pinsent Masons in Dublin, said the final outcome should be a warning to brand owners about the binding effect prior judgments can have.

“From the judgment it is evident that once a court has decided who is the proprietor of a mark, that issue cannot be revisited in subsequent proceedings between the same parties,” she said.

“This long running dispute demonstrates the importance of brand owners carrying out thorough clearance searches, before launching a brand, to avoid conflicts and confusion with existing marks.”

“It also shows how important it is for brand owners to file trade mark applications early, as well as keeping records of how they came up with the brand and maintain evidence of first use in the jurisdiction in order to support a claim of proprietorship.”