Mr Justice Brian Cregan said he will make an order restraining Irish firm Montex Holdings Limited from unlawfully using the “Diesel” mark. Such a move will remove all risk of confusion and/or deception in the market place, he said.
Italian-based Diesel SPA is entitled to register the trademark in Ireland, the judge held.
Diesel SPA has been selling clothing throughout many EU countries since 1978 and in Ireland since 1982 under its “Diesel” brand. Montex began making jeans in Ireland with the name “Diesel” on them since late 1979/early 1980, the judge said.
Montex applied in 1992 to trademark the word in its favour in Ireland while Diesel SPA sought to secure the registration in 1994. Each opposed the other’s bid to register the mark here.
The Controller of Patents, Designs and Trademarks in 1998 upheld Diesel SPA’s objection to Montex’s application. Montex appealed the decision to the High Court and then, in 2001, to the Supreme Court, which both refused its registation.
In 2012 the Controller upheld Montex’s opposition to Diesel SPA’s trademark request.
Diesel SPA appealed this decision to the High Court, which found it is entitled to register the mark.
In a ruling published on Thursday, Mr Justice Cregan said Diesel SPA claimed it designed the mark, thought up the name and applied it to its jeans and other products. The word is trademarked in many countries, and Montex “copied” this in flagrant violation of its ownership rights, Diesel SPA alleged.
Montex submitted it came up with the name independently and was its first user in Ireland so it was entitled to own the trademark. It alleged it purchased the mark from Monaghan Textiles Ltd at some point after it went into receivership in 1988.
A director of Montex, Patrick McKenna, said he has worked with Monaghan Textiles since 1963 and that the factory used to be next to a petrol station that had a big red Diesel sign on display. He said they were trying to develop a name for their range of jeans and a colleague suggested it.
The judge said much of Mr McKenna’s evidence could be given little or no weight due to it being hearsay and not backed up by other evidence. His assertion that he has never looked at Diesel SPA’s “Diesel” logo, “strains credulity”, said the judge.
Mr Justice Cregan said it is clear from the evidence that Montex can only demonstrate use of the word from 1979 on, which is a year after Diesel SPA first used the mark in Italy and three other European countries.
The judge was satisfied Montex put forward no admissible or credible evidence to explain how it came to use the word on its jeans. It was noteworthy that Montex’s managing director, Michael Heery, who was also a director of Monaghan Textiles, gave no evidence on the circumstances in which the firm adopted the Diesel name.
Rather than believe the use was an “amazing coincidence”, the judge said it was more reasonable to conclude Monaghan Textiles saw Diesel SPA’s brand name and proceeded to copy it.
He rejected Montex’s argument that, even if it did copy the Diesel SPA mark, it was perfectly legitimate as it was not an employee of that firm and the mark was not registered in Ireland.
“In my view, the copying of a mark is an act of dishonesty. Dishonesty is never a legitimate business practice,” the judge said.
Had it chosen the word “Gasoline” this 30-year battle would not have occurred, but instead it used “Diesel” to “effectively ‘piggyback’” on the Italian firm’s products, he added.
He found Montex “is not, and has never been, the bona fide or lawful proprietor of the mark”.
