Trademark registration for clothing brand refused due to likely confusion, regardless of claims of copying or bad faith

The Court of Appeal overturned the High Court’s decision and upheld the refusal of a trademark registration for a clothing company’s 'Diesel' mark in Ireland. The case arose from a protracted dispute between an Italian fashion company and an Irish manufacturer, each seeking to register the ‘Diesel’ trademark for jeans. The High Court had previously ruled in favour of the Italian company, reasoning that although consumer confusion would result, the confusion stemmed from alleged wrongful copying by the Irish company. However, the Court of Appeal held that Irish law requires refusal of registration whenever confusion would result, regardless of blame or the cause of confusion. The court further found that the earlier High Court judgment, which recognised the Irish applicant as the proprietor of the mark, was conclusive (res judicata) and should not have been revisited. Consequently, confusion alone was sufficient to bar registration, and claims of copying or bad faith were irrelevant to this outcome. The appellate court confirmed that the Italian company’s applications must be refused and invited the parties to make submissions on costs and the final order.