Case Note: Diesel S.p.A. v Controller of Patents, Designs and Trademarks v Montex Holdings Limited (Court of Appeal, Unreported, 2 October 2018).
This month Hogan J has delivered the most recent judgement in a long-running series of proceedings which concern the Italian fashion label Diesel S.p.A (Diesel Italy) and the Irish clothing company, Montex Holdings Limited (Montex), where the court confirmed a strict test for admitting new evidence on appeal in trade mark cases.
By way of background, in the 80s the Applicant, Diesel Italy, successfully opposed Montex’s Irish trade mark application DIESEL. Subsequently, Montex successfully opposed an Irish trade mark application filed by Diesel Italy. This Court of Appeal decision is the latest instalment in this matter, which “in some ways…parallel the original Montex Holdings decision, save, of course, that the position of the parties has been reversed” (Hogan J).
Diesel Italy have appealed the refusal of their trade mark application and in addition, they have sought leave to file additional evidence which was not before the Controller when the decision was issued, finding in favour of the opposition brought by Montex (see the Controller’s Decision of 9 September 2013).
The case before the Court of Appeal was brought by both Montex and the Controller, appealing the High Court Decision (delivered by Binchy J) where a portion of the late evidence was permitted. The question to be considered by the Court of Appeal was what test ought to be applied when deciding whether or not additional evidence may be entered in in a trade mark dispute after the decision from the Controller, upon Appeal to the High Court.
When deciding to allow the opposition, the Controller was critical of Diesel Italy’s lack of evidence for clothing sold in Ireland. Diesel Italy had failed to substantiate claims of invoices and magazine advertisements with actual samples as evidence. When determining whether fresh evidence can be entered in at a later point, the Court of Appeal determined that the test in Murphy v Minister for Defence  2 IR 161 is to be applied. The High Court had applied a UK test – the test in Hunt-Wesson Inc’s Trademark Application  RPC 233 – which was perceived to be more lenient.
Hogan J of the Court of Appeal noted that there is a ‘strong leaning against’ the permissibility of new evidence being entered in at a later time – considering the decision in Emerald Meats Ltd. v Minister for Agriculture  IESC 48. The rules governing fresh evidence from being entered in later are strict – and rightly so for the sake of public interest.
Emphasis was placed on the fact that parties should be aware of the finality of litigation. Parties ought to prepare their best case to put forward from the outset. Litigation ought to be certain. Hindsight is a wonderful thing but one party shouldn’t be put at a disadvantage because the first party realises they should have approached the matter differently the first time around.
The Court was satisfied that the approach of asking whether or not the evidence was available at the beginning of the trial is a reasonably flexible test. Finlay CJ in Murphy stated that there are three considerations to be made:
(i) Was the evidence was in existence at the time of the trial but could not have been reasonably obtained;
(ii) Would the evidence have been influential on the outcome of the case; and
(iii) If the evidence is credible?
It would be against the public interest, and therefore set bad precedent, to allow or encourage parties to take a more relaxed approach when presenting evidence to the Controller. Parties must not be lead to believe that they can take a second bite of the cherry before the courts in the event that the matter progresses that far. This is a very important thing to note for trade mark proprietors involved in a dispute before the Controller. It is imperative that the fullest extent of evidence available is provided to your Trade Mark Attorney when preparing a case to be heard by the Irish Patents Office.
The Court of Appeal has now confirmed that Murphy is the correct test to apply and also gave consideration to similar comments made by Laffoy J in Unilver v Controller  IEHC 426 where public policy considerations were also discussed.
The stage is now set for the next instalment which is the substantive appeal of the Controller’s decision to uphold Montex’s opposition, The Court of Appeal expressed the view that this should occur without further undue delays.