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High Court, on appeal from a decision of the Controller of Patents, determines that an Italian company was entitled to register the trademark 'Diesel' in respect of clothing, despite the fact that an Irish company had used the same name since 1979, the year after the Italian company started to use the name, on the grounds that: (a) the evidence established that an Irish company started to use the name in 1979, and not in 1978 as alleged; (b) the respondent was able to establish that it had purchased the name from the Irish company; (c) the key issues in the litigation were not res judicata, despite earlier litigation; (d) the copying of the name by the Irish company in 1979 had been dishonest and wrongful; and (e) there would be confusion and deception if both marks were to continue to be used in Ireland.
Statutory appeal from decision of Controller of Patents - registration of trademarks - clothing, footwear, headgear - brand name used in Italy and other European counties from 1978, and in Ireland from 1982 - same name used by Irish company from about 1979 - applications relating to relevant names dating back to 1992 - decision in 2013 to refuse application by Italian company to register trademark - admission of evidence - application to set aside decision of Controller - Section 57 of the 1963 Trade Marks Act - appeal 'by way of rehearing' - who owns the mark 'Diesel' - whether registration of other trademark was likely to cause confusion - whether court should exercise its discretion to refuse to register the trademark - whether Irish company dishonestly copied mark belonging to Italian company - res judicata - whether Irish company was a bona fide user of the trademark.
Note: This is intended to be a fair and accurate report of a decision made public by a court of law. Any errors should be notified to the editor and will be dealt with accordingly.
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