Court of Appeal ends 30-year jeans battle
An expert in intellectual property (IP) has said that the final outcome of a long-running case in the Irish courts should be a warning to brand owners about the binding effect prior judgments can have.
Maureen Daly of Pinsent Masons was commenting on a ruling by the Court of Appeal last week that ended a 30-year legal battle over the rights to the ‘Diesel’ trademark for jeans in Ireland.
Irish company Montex Holdings Limited and the Italian company Diesel SpA had both applied to register the name ‘Diesel’ as a trademark for jeans in 1992 and 1994, respectively.
High Court ruling
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.
In late 2023, however, the High Court agreed that Diesel SpA could register the brand. While acknowledging that this would create confusion, the judge ruled that this was caused by “dishonest, wrongful and unlawful copyright of the mark” by Montex.
Supreme Court ‘settled matter’
In on the firm’s website, Daly notes that the Court of Appeal has now overturned the High Court decision, reversing the matter to the previous situation, where neither company can legally register the trademark in Ireland.
found that the 2001 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.
“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,” Daly commented.
“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,” she added.
“It also shows how important it is for brand owners to file trademark 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,” the Pinsent Masons lawyer concluded.