IESC 7 · Supreme Court

AN CHÚIRT UACHTARACH THE SUPREME COURT [S:AP:IE:2019:000033] Clarke C.J. Mac Menamin J. Dunne J. Charleton J. Irvine J.

Between/

DIESEL S.P.A.

APPELLANTS/APPLICANTS

AND

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS

FIRST NAMED RESPONDENT

AND

MONTEX HOLDINGS LIMITED

SECOND NAMED RESPONDENT

Judgment of Irvine J. delivered the 19th day of March, 2020 1. At the centre of this appeal lies an application by Diesel S.P.A. (“Diesel”) to introduce

new evidence in an appeal from the Controller of Patents, Designs and Trademarks

(“the Controller”) to the High Court. Initially, the High Court (Binchy J.) held that some

of the proposed new evidence might be admitted, but the Court of Appeal overturned

that decision and held that none of the evidence was to be admitted. 2

Background Facts and Procedural History

2. This appeal is framed by a long-running trademark dispute between Diesel and Montex

Holdings Limited (“Montex”). Diesel is an Italian fashion company designing,

manufacturing and selling casual clothes, predominantly jeans products, leather goods

and jackets. Montex is also a fashion brand, established in Ireland and operating in a

similar field. Both trade under the “DIESEL” trademark in Ireland and have as a result

been engaged in protracted litigation.

3. A first set of proceedings arose from attempts by Montex to have the “DIESEL”

trademark registered in its name (“the Montex proceedings”). That application was

made in September 1992. Diesel, however, objected to the Montex’s application. The

Controller rejected Diesel’s opposition based upon s. 25 of the Trade Marks Act 1963

(“the 1963 Act”) given that he was satisfied that the “DIESEL” mark was probably first

used by Montex and that it had established sufficient title to the then unregistered mark.

However, he upheld Diesel’s opposition based upon s. 19 of the 1963 Act because he

considered that the use and reputation acquired by Diesel in its “DIESEL” mark prior

to 1992 would likely lead to confusion or deception if Montex was to be registered as

proprietor of the “DIESEL” mark. Montex appealed to the High Court, where

O’Sullivan J., upheld the Controller’s decision based on s. 19 of the 1963 Act and also

concluded that its opposition based on s. 25 should succeed in circumstances where he

was not satisfied that Montex had established that its predecessor, Monaghan Textiles

Limited from whom it had purchased the unregistered mark, had adopted the mark bona

fide, see Montex Holdings Limited v. The Controller of Patents Designs and

Trademarks and Another [2000] 1 I.R. 577. A further appeal by Montex to the Supreme

Court was unsuccessful. There, Geoghegan J. did not engage with the 3

ownership/proprietorship issue (s. 25) but concluded that registration by Montex of the

“DIESEL” mark would likely result in confusion and deception with the result that

Diesel’s s. 19 opposition was upheld, see Montex Holdings Limited v. The Controller

of Patents Designs and Trademarks and Another [2001] 3 I.R. 85.

4. The present proceedings arise from Diesel’s later attempt to have the “DIESEL” mark

registered in its name. This time, Montex opposed Diesel’s application contesting both

proprietorship under s. 25 of the Act and confusion and deception under s. 19. Although

Diesel lodged its application in January 1994, the hearing before the Controller did not

take place until May 2012. This was due in part to the parties awaiting the outcome of

the Montex proceedings but also due to the drawn-out pre-hearing process wherein both

parties filed evidence and replied to each other’s evidence with yet further evidence.

On 21st May, 2012, the opposition proceedings came on for hearing subsequent to which

the Controller refused Diesel’s application for registration. Relevant to the present

appeal is the fact that in his determination, upholding Montex’s opposition, the

Controller highlighted Diesel’s failure to provide more evidence than it had done

concerning the extent of the sale of its goods in Ireland. Before moving to consider the

Diesel’s appeal to the High Court, I feel it would be remiss not to express the view that

the delay of the parties in bringing to fruition, in May 2012, an application for

registration lodged in 1994, is nothing short of egregious. Delay of that magnitude,

absent extraordinary circumstances, should not occur and cannot be in the interest of

the parties apart altogether from the fact that it has the potential to bring the statutory

scheme into disrepute.

5. By special summons dated 7th November, 2013, Diesel appealed to the High Court

against the decision of the Controller pursuant to ss. 26 and 57 of the 1963 Act – these 4

being the provisions in the trademark legislation operating at the time which provided

for such an appeal.

6. Diesel then issued a motion, dated 24th February, 2014, seeking special leave under s.

26(9) of the 1963 Act to bring forward further material for the consideration of the court

on the hearing of the appeal. Three affidavits were sworn to this end, namely: (i) the

affidavit of Simon Cutting, dated 24th February, 2014; (ii) the affidavit of Edmund

Shanahan, dated 21st February, 2014; and (iii) the affidavit of Stefano Iesurum, sworn

on 6th March, 2014. Much of the documentary evidence sought to be introduced is to

be found in the exhibits appended to Mr. Iesurum’s affidavit.

7. Because this court has been asked to decide whether, having regard to the test to be

applied on an application under s. 26(9), the Court of Appeal should have admitted the

new materials, it is convenient at this point to provide a brief description of those

exhibits:

(a) SI2 – One Diesel advertisement in Face magazine dated August 1992; six

advertisements in Arena magazine from the period September 1992 to January

1994.

(b) SI3 – Another copy of the above advertisement in Face magazine and a further

copy of an advertisement in Arena magazine dated December/January

1992/1993. Copies thereof, but of poorer quality, were before the Controller.

(c) SI4 – A table headed “Total Average Net Sales”. Mr. Iesurum avers that the

table shows circulation figures for each of the magazines in the UK and Ireland. 5

(d) SI5 – A letter from a Mr. Rod Sopp, advertisement director at Face and Area

magazines stating that “Face and Arena have consistently carried advertisement

for Diesel jeans since February 1992”.

(e) SI6 – A similar letter to SI5 but from a Mr. Roger Rahaman, sales and marketing

director at ID magazine.

(f) SI7 – Four invoices submitted with the application before the Controller but

now exhibited in better image quality.

(g) SI8 – A further ten invoices to demonstrate distribution of products in Ireland.

(h) SI9 – Two invoices of the distributor of Diesel products.

(i) SI10 – The affidavit of Mr. Simon Cutting, as above.

(j) SI11 – Television listings in the Irish Times during September and October

1991 which referred to an event on a satellite channel called “Diesel Jeans

Superbike”.

(k) SI12 – The affidavit of Mr. Edmund Shanahan, as above.

(l) SI13 – A copy of the Italian trademark registration of the “DIESEL” mark.

(m) SI14 – A copy of Montex’s certificate of incorporation.

8. Before the court ruled on the admissibility of the aforementioned documents, Montex

filed a number of replying affidavits, namely those of:

(a) Karen Gallagher, dated 3rd October, 2014.

(b) Michael Heery, dated 3rd October, 2014. 6

(c) Shane Smyth, dated 13th October, 2014.

9. The Controller then filed a replying affidavit dated 28th October, 2014, following which

Diesel filed a further six replying affidavits:

(a) second affidavit of Edmund Shanahan, dated 4th February, 2015;

(b) second affidavit of Simon Cutting, dated 5th February, 2015;

(c) second affidavit of Stefano Iesurum, undated but supposedly of 11th February,

2015;

(d) affidavit of Renzo Rosso, dated 11th February, 2015;

(e) second affidavit of Deirdre Fallon, dated 12th February, 2015;

(f) affidavit of Peter Lawley, dated 18th February, 2015.

10. In reply, Montex filed a second affidavit sworn by Michael Heery, 20th March, 2015.

This extensive exchange of affidavits concluded with Diesel filing a third affidavit

sworn by Deirdre Fallon, dated 13th April, 2015.

11. Following the exchange of affidavits, Diesel applied to the High Court to admit as

evidence on the hearing of the appeal the documents as originally requested, and the

affidavits and exhibits filed in reply thereto.

High Court judgment

12. By his judgment and order dated 9th June, 2016 and 20th September, 2016 respectively,

Binchy J. determined that some of the documents sought to be introduced by Diesel on

the appeal should be admitted, namely: 7

(a) all the exhibits as appended to Stefano Iesurum’s affidavit except the affidavit

of Edmund Shanahan (SI12) but not the affidavit of Stefano Iesurum itself;

(b) the first and second affidavit of Simon Cutting, dated 24th February, 2014 and

11th February, 2015 respectively;

(c) the affidavit of Peter Lawley, dated 20th February, 2015;

(d) the affidavit of Renzo Rosso, dated 12th February, 2015;

(e) the third affidavit of Deirdre Fallon, dated 13th April, 2015.

13. In the High Court, a dispute arose as to the appropriate test to be applied by the court

on an application for special leave to bring forward further material for consideration

on the hearing of an appeal. Essentially, the Controller contended that the test in Murphy

v. Minister for Defence [1991] 2 I.R. 161, a test outlined in greater detail at paras. 51ff.

of this judgment, should apply. Diesel, on the other hand, contended that a different and

more flexible test should be applied. It cited the English decision of Hunt-Wesson Inc.’s

Trademark Application [1996] R.P.C. 233. Therein, Laddie J. held that the court should

have regard to a wider range of factors than would otherwise apply, where new evidence

is sought to be introduced in a trademark appeal. The following is the list of factors

which he stated should be considered on any such application:

“(i) [w]hether the evidence could have been filed earlier, if so, how much earlier;

(ii) if it could have been, what explanation for the late filing had been offered to

explain the delay;

(iii) the nature of the mark;

(iv) the nature of the objections to it; 8

(v) the potential significance of the new evidence;

(vi) whether or not the other side would be significantly prejudiced by the admission

of the evidence in a way which could not be compensated e.g. by an order for

costs;

(vii) the desirability of avoiding multiplicity of proceedings and,

the public interest in not admitting on the register invalid trademarks”.

14. For the purposes of considering the test to be applied, Binchy J. considered it relevant

to identify the scope of the appeal under consideration. He compared an appeal from

the Controller to the High Court with other appeals mechanisms. He considered that an

appeal under s. 57 of the 1963 Act, being a “full rehearing”, was more analogous to an

appeal from the Circuit Court to the High Court than to an appeal from the High Court

to the Court of Appeal under the present constitutional regime or to the Supreme Court

prior to the Thirty-Third Amendment to the Constitution. Henceforth, I will refer to the

latter type of appeals as “ordinary appeals” from a decision of the High Court. The High

Court judge also observed that in appeals from the Circuit Court to the High Court, the

rules as to the admissibility of evidence on the appeal are more liberal particularly

where oral evidence has been given at first instance. And, in this regard he noted that

oral evidence had been adduced by the parties in the hearing before the Controller.

15. The High Court judge went on to conclude that, having regard to the nature of the

appeals mechanism and the wider public interest, both in protecting intellectual

property rights, and in not admitting onto the register invalid trademarks, a less rigorous

test than the one provided for in Murphy should apply. The Murphy test had, he

observed, been devised to deal with applications to admit new evidence in an altogether 9

more restricted type of appeal, such as an ordinary appeal from a decision of the High

Court. Thus, he concluded that the Hunt-Wesson test was the appropriate test to be

deployed by a court when asked, pursuant to s. 26(9) of the 1963 Act, to admit further

material on the hearing of a s. 57 appeal.

16. Binchy J. then proceeded to apply the criteria in Hunt-Wesson to the proposed new

evidence. Having done so he concluded:

(a) All of the new evidence could have been filed earlier and no explanation had

been offered to explain the delay in obtaining it.

(b) The new evidence was as a direct response to the criticism by the Controller in

his determination concerning the lack of evidence adduced by Diesel at the

opposition hearing.

(c) The nature of Montex’s objections favoured admitting the evidence. The parties

had argued over the extent and usage of the mark by Diesel in Ireland and the

evidence would help to clarify the case in that regard. Thus, materials relating

to the advertisements of Diesel’s products and the circulation of the magazines

in which those advertisements were published, should be allowed.

(d) As to the possible prejudicial effect of admitting the proposed evidence, the

invoices and advertisements would potentially assist the court in ascertaining

the transactions that had taken place over the relevant period as well as the

impact of any advertising. Furthermore, as the evidence related to things that

had actually occurred, Montex would not need to adduce evidence in reply.

Thus, it would not be prejudiced by the new evidence. 10

(e) The evidence of Mr. Cutting and Mr. Shanahan could be prejudicial in that it

would be difficult for Montex to source contradicting evidence concerning

business activities and market conditions going back more than 20 years.

However, Mr. Cutting’s evidence should be admitted as it dealt specifically with

Diesel’s sales in Ireland, again reflecting what actually occurred, evidence

which could therefore not be prejudicial to the interests of Montex.

(f) The evidence as to the reputation of Montex contained in Mr. Iesurum’s and

Mr. Shanahan’s affidavits were averments as to general character and should

not be allowed. Further, the admission of Mr. Shanahan’s affidavit would

prejudice Montex as it would have to find a similarly qualified deponent who

could testify as to the circumstances of Montex and the fashion industry more

than 20 years ago. The judge reemphasised the point that saddling Montex with

an obligation to source evidence from such a long time ago would cause it

prejudice.

17. The Controller appealed the decision of the High Court to the Court of Appeal and, in

turn, Diesel filed a cross-appeal with a view to having the evidence which had been

excluded by the High Court judge admitted.

Court of Appeal judgment

18. In his judgment delivered on 2nd October, 2018, Hogan J., with whom the other

members of the Court agreed, concluded that the High Court judge had erred in law in

acceding to any aspect of Diesel’s application to admit new evidence. 11

19. Hogan J. first addressed the nature and extent of an appeal from the Controller to the

High Court. He looked in particular at s. 25(7) of the 1963 Act remarking as follows:

“What, then, are the relevant statutory provisions of the 1963 Act so far as the

scope of the s. 57 appeal is concerned? To my mind, the provisions of s. 25(7)

are the most critical ones, because they plainly envisage that the appeal from

the Controller to the High Court will be based on the materials which were

before the Controller in the first instance and that the admission of any new

evidence on appeal will only thereafter be with the leave of the High Court itself.

It may, accordingly, be said that the scope of appeal thereby envisaged is in

many respects indistinguishable from that which prevailed from the High Court

to the Supreme Court prior to the establishment of this Court in October 2014

and, since that date, in respect of appeals from the High Court to this Court.”

20. He then considered whether, as a consequence, the test in Murphy should apply or

whether the test in Hunt-Wesson was to be preferred. In so doing he first noted the

dictum of O’Donnell J. in Emerald Meats Ltd. v. Minister for Agriculture [2012] IESC

48 which in the opinion of Hogan J. states the rationale for why the admission of new

evidence on appeal should be significantly restricted. In this regard he stated:

“The important public policy objectives associated with the finality of litigation

and the desirability that the parties advance their entire case when given the

appropriate opportunity to do so – essentially the entire jurisprudence associated

with Henderson v. Henderson onwards and re-stated by O’Donnell J. in the

passage I have just quoted - must accordingly all inform the exercise of any

discretion to admit new evidence.” 12

21. Second, Hogan J. expressed himself satisfied that the factors set out in Hunt-Wesson

did not adequately address the concerns identified by the court in Emerald Meats. In

this regard he referred to the judgment of Laffoy J. in Unilever v. Controller for Patents

and Another [2006] IEHC 426 which he considered had criticised the Hunt-Wesson test

on the basis that a party should not be entitled to “mend its hand” on appeal having seen

the decision of the Controller. He reiterated Laffoy J’s concerns about excepting

trademark appeals from the Murphy principles and that to do so would set a

questionable precedent for appeals relating to other public registers.

22. Lastly, Hogan J. observed that the High Court and Court of Appeal were bound by the

decision in Murphy. Accordingly, for all of the aforementioned reasons, he concluded

that the test in Murphy was the test to be applied to Diesel’s application pursuant to s.

26(9) of the 1963 Act.

23. Having so decided, Hogan J. then applied the Murphy test to the proposed new

evidence. In so doing, he did not demur from the conclusions reached by the High Court

judge to the effect that (i) the evidence sought to be introduced on appeal was available

to Diesel at the time of the hearing before the Controller; (ii) no explanation had been

offered to explain the delay in bringing forward that evidence; and (iii) the evidence has

been unearthed in response to the comments of the Controller in his determination. In

such circumstances the application failed the Murphy test with the result that the appeal

should be allowed and the cross appeal dismissed. 13

The Supreme Court

24. On the 25th February, 2019 Diesel brought an application seeking leave to appeal the

decision of the Court of Appeal to the Supreme Court.

25. By determination dated, 6th June, 2019 this court granted Diesel leave to appeal

concluding that there existed a genuine dispute as to the test to be applied when a party

seeks to introduce new evidence in an appeal to the High Court from a decision of the

Controller. This was, the court concluded, an issue of general public importance and

one which warranted further consideration so that clarity might be brought to the law

on such applications.

Diesel’s submissions 26. Diesel’s principal submission is that the Court of Appeal mischaracterised the scope of

the appeal provided for under s. 57 of the 1963 Act. The appeal was not, as had been

found by Hogan J., “indistinguishable” from an ordinary appeal from a decision of the

High Court. On an appeal from the Controller, the High Court is “untrammelled” by the

Controller’s decision. It conducts its own independent hearing and does not merely

review the lawfulness of the decision of the Controller. As a consequence, any test for

the admission of new evidence must be less restrictive than that provided for in Murphy.

Diesel, in this regard, relies upon a line of case law to be found in decisions such as:

Philadelphia Storage Battery Co. v. Controller for Industrial and Commercial Property

[1935] I.R. 575; In re Application of Hamilton Cosco Inc. [1966] I.R. 266; Seven Up

Co. v. Bubble Up Co. [1990] I.L.R.M. 204.

27. Diesel further contends that the policy considerations underlying a s. 57 appeal are

different to those in other appeals and that consequently, the test as articulated in

Murphy and Emerald Meats should not be applied to an application to admit new 14

evidence in a trademark appeal. In particular, Diesel relies upon the fact that, regardless

of the outcome of this appeal, it is entitled to file another application for the inclusion

of its “DIESEL” mark on the trademark register. Therefore, any consideration of factors

such as the avoidance of multiplicity of proceedings or concerns as to the finality of

litigation are less relevant, and the Murphy line of case law can be distinguished on that

basis. Furthermore, Diesel asserts that there are other policy considerations at play here

which are not ordinarily found in most appeals. Any test must take account of the fact

that the aim of the trademark system is not to reach a final just decision in relation to a

dispute between parties but to maintain an accurate register. Consequently, where the

admission of additional materials would advance such an objective, traditional rules as

to the circumstances in which that evidence might be admitted must yield. The test in

Hunt-Wesson takes account of these policy arguments and is therefore the more apt test

in appeals of this kind. Diesel also refers to other UK authorities emphasising the

different policy considerations that apply in these circumstances. These include

decisions such as BALI Trade Mark [1966] R.P.C. 387; Club Europe Trade Mark

[2000] R.P.C. 329; and Du Pont’s Trade Mark [2004] F.S.R. 15. Diesel also argues that

the flexibility of the Hunt-Wesson test allows the court to adequately account for the

good will and hard work of those seeking to register a mark of which they are the

proprietor.

28. In the alternative, if the court were to decide that Murphy applied, Diesel argues that,

as specifically addressed by O’Donnell J. in Emerald Meats, the test in Murphy allows

the court to admit further evidence where “the trial takes an unexpected turn”. This,

Diesel says, applies on the facts of this case. It argues that the Controller, being faced

with the same evidence as to the use and reputation acquired by Diesel in its mark in 15

the Montex application, in deciding Diesel’s application the other way, constitutes an

unexpected turn. Thus, even if Murphy were applied, there would be scope to admit the

new evidence.

The Controller’s Submissions 29. Concerning the characterisation of the appeals mechanism as provided for in s. 57, the

Controller maintains that the Court of Appeal was correct in its interpretation. He

highlights, in particular, s. 25(7) of the 1963 Act, wherein it is provided that the appeal

will be on the basis of the evidence that was before the Controller at first instance unless

the court grants “special leave”. Thus, the rules regarding the admission of evidence on

an appeal from the Controller need to take account of the limited scope of the appeal

and for this reason Murphy is the suitable test. Further, the Philadelphia Storage Battery

authority does not address the test for adducing additional evidence but rather focuses

upon the scope of a s. 57 appeal. Accordingly, the decision is not of major significance

when it comes to ascertaining the test to be applied.

30. The Controller further argues that the Court of Appeal was correct in how it applied the

Murphy test. Hogan J. correctly identified the findings of fact of the High Court judge

that the proposed new evidence, although relevant, could have been procured for the

initial hearing and that nothing had been advanced to explain why the production of

that evidence had been delayed. Hogan J. was also correct to conclude that the hearing

before the Controller had not taken an unexpected turn of the type envisaged by

O’Donnell J. in Emerald Meats. Accordingly, the circumstances did not warrant the

court departing from the Murphy test when considering the application to admit the new

evidence. The Controller adds that insofar as Diesel invokes an unexpected turn of

events, such events did not take place in the course of the hearing. The events upon 16

which it relies are to be found in his determination wherein he commented on the lack

of evidence provided by Diesel in terms of its use of the “DIESEL” trademark. Thus, it

cannot be stated that there was any turn of events in the course of the proceedings before

him. Rather, Diesel, with the benefit of his determination, had decided to augment its

evidence for the High Court appeal, in its effort to make a stronger case than it had done

at first instance.

Montex’s Submissions 31. In opposing the appeal, Montex does not take issue with the application of the Hunt-

Wesson test. It characterises that test as one where, generally speaking, Murphy is

applied but where deviations are permissible when trademark-specific considerations

would permit such an approach. Significantly, Montex contends that many of the factors

addressed by Laddie J. in Hunt-Wesson are not relevant to the within appeal. In

particular, the wider trademark considerations which underpin the deviations in that

decision do not find application here because the within appeal is principally a dispute

inter partes and therefore does not engage trademark public policy matters. Therefore,

a stripped-down version of Hunt-Wesson would apply, largely resembling the test in

Murphy in any event.

32. Montex then argues that if Hunt-Wesson, in its reduced form, is applied to the facts of

the present case, Diesel’s application must fail. It argues that, all the materials which

Diesel seeks to introduce so belatedly, were discoverable at the time of the initial

hearing and the explanation offered at Court of Appeal stage (that Diesel was surprised

by the Controller’s findings in the second proceedings in circumstances where the

Montex proceedings were conducted on the same evidence) provides an insufficient

basis for the admission of the additional materials. Montex is not entitled to mend its 17

hand having seen the Controller’s decision. Furthermore, Montex maintains that the

proposed materials are not, in any event, relevant and would not contribute to

illuminating the court as to the use of the “DIESEL” mark in the years prior to the

application.

33. Montex further maintains that any exception predicated upon an alleged unexpected

turn of events before the Controller, as articulated in Emerald Meats, does not withstand

scrutiny. It argues that although on a superficial appraisal, the finding of the Controller

might appear to be in conflict with that which had been made in the Montex

proceedings, the decisions are, in fact, two sides of the same coin. Counsel for Montex

put it to the court that in both proceedings, the respective hearing officers found that,

although Montex can be seen as having proprietorship of the “DIESEL” mark, there

was a risk of confusion between Montex’s “DIESEL” and Diesel’s “DIESEL” so that

neither party could register the mark with the Controller. Therefore, the fact that the

Controller refused Diesel’s application was not in conflict with the decision made by

the Controller in respect of Montex’s application and could not be considered an

unexpected turn of events.

34. Lastly, Montex questions whether the scope of the appeal as provided for in the 1963

Act does, in fact, inform the court as to the test to be applied on an application to admit

new evidence under s. 26(9). In other words, it argues that the nature of the appeal is

not inextricably linked to the test for adducing further evidence. 18

Discussion

35. Having set out the factual background and the submissions of the parties, I will now

address the question which underlies this appeal, namely, what is the test to be applied

by the High Court when faced with an application to introduce new evidence/materials

on an appeal from the Controller pursuant to s. 57 of the 1963 Act? To answer that

question, a number of issues fall to be considered: (i) the statutory provisions

underpinning the appeal and the nature of the appeal contained therein, (ii) the policy

objectives of Murphy and (iii) what the case law so far has said about the test to be

applies to an application under ss. 26(9). 57 of the 1963 Act. Having explored these

issues, it should be easier to determine what test should be applied.

Statutory provisions and the Rules of the Superior Courts

36. The relevant provisions of the 1963 Act are s. 25(7), s. 26(9) and (10) and s. 57 which

provide as follows:

25(7) “Appeals under section 57 of this Act against decisions of the Controller under

this section shall be heard on the materials stated as aforesaid by the Controller,

and no further grounds of objection to the acceptance of the application shall be

allowed to be taken by the Controller, other than those so stated as aforesaid by

him, except by leave of the Court.”

26(9) “On the hearing of an appeal under section 57 of this Act against a decision of

the Controller under this section any party may, either in the manner prescribed

or by special leave of the Court, bring forward further material for the

consideration of the Court.” 19

26(10)(a) “On an appeal under section 57 of this Act against a decision of the controller

under this section no further grounds of objection to the registration of a

trademark shall be allowed to be taken by the opponent or the Controller, other

than those so stated as aforesaid by the opponent, except by leave of the court.”

57(1) “An appeal shall lie to the Court from any order or decision of the Controller

under any provision of this Act (not being a decision of the Controller under

section 11 or subsection (7) of section 69 of this Act) or from a correction of an

error in the register by the Controller under subsection (3) of section 42 of this

Act, and the Court may make such order confirming, annulling or varying the

order or decision or correction of the Controller as it thinks fit.”

57(2) “In any appeal from a decision of the Controller to the Court under this Act, the

Court shall have and exercise the same discretionary powers as under this Act

are conferred upon the Controller.”

37. Consistent with the aforementioned provisions, O. 94, r. 48 of the Rules of the Superior

Courts (“RSC”) (as amended) states:

“Every such appeal to the Court shall be by way of rehearing; and, subject to

the provisions of the Act, every appeal under section 25 of the Trade Marks Act,

1963, shall be heard on the materials stated by the Controller to have been used

by him in arriving at his decision, and every other appeal shall be heard on the

same evidence as that used at the hearing before the Controller. No further

evidence shall be given nor further material brought forward for the

consideration of the Court on the hearing of any appeal without the special leave

of the Court granted on an application made at or before the hearing…” 20

38. What is patently clear from these provisions is that notwithstanding the clearly

expressed intention that any s. 57 appeal should be determined on the evidence or

materials that were before the Controller, the statutory scheme nonetheless makes

specific provision for the introduction of new evidence in certain circumstances.

However, this evidence can only be admitted either “in the manner prescribed” or, “by

special leave. Regrettably, I have been unable to identify the circumstances in which

new evidence might be admitted “in the manner prescribed” and given that neither party

to this appeal has contended that this provision is of relevance to the court’s

considerations, I intend to focus on that aspect of s. 26(9) which requires a party seeking

to introduce new evidence/materials to obtain special leave of the court, a requirement

mirrored in O. 94, r. 48.

Scope of the Appeal

39. The following is clear from the plain meaning of the words in s. 26(9) of the 1963 Act,

namely:

(i) that the court has discretion to admit new materials on the hearing of the appeal;

(ii) that the onus is on the party applying for special leave, to justify the exercise of

the court’s discretion in its favour; and

(iii) no express limits are placed upon the court’s discretion and no guidance

afforded as to how that discretion should be exercised.

40. In this regard both Diesel and the Controller argue that it is the scope of the appeal

which determines the test to be applied, while Montex maintains that the admission of

fresh evidence is not inherently or inextricably linked thereto. Although this issue will 21

be discussed in more detail later, it suffices for the moment to observe that it is the

scope of the appeal which controls the extent to which, if at all, an appellate court may

engage with the evidence. That being so, the extent to which the court may engage with

the evidence on the appeal, in my view, must inform the court’s view as to the

circumstances in which new evidence might be admitted on any appeal.

41. For example, where an appeal is confined to a review of a first instance decision, the

appellate court must determine the appeal upon the evidence as it was before the

original decision maker. If it were to take into account evidence that was not before the

previous decision maker, it could not be said to be conducting a review, rather it would

be substituting its own decision for that of the original decision maker. By way of

contrast, where the first instance decision is irrelevant to the role of the appellate court,

such as where an appellant enjoys a right to a de novo hearing, the introduction or

admission of new evidence does not impact on the function of the appellate court given

that it is free to hear the case upon new and fresh evidence, the previous decision having

no limiting effect on its remit. Therefore, the scope of the appeal must have a material

bearing upon the manner and circumstances in which new evidence may be admitted

on the appeal.

42. Accordingly, in circumstances where it is clear from the express provisions of s. 26(9)

that new evidence may be admitted on an appeal under that section, and that the scope

of the appeal must impact upon the circumstances in which new evidence will be

admitted, I will now consider in some detail the scope of the appeal provided for under

the 1963 Act.

43. To establish the boundaries of a s. 57 appeal, it is helpful to first consider the features

of a number of differing types of appeal. In Fitzgibbon v. Law Society of Ireland [2014] 22

IESC 48, Clarke J., when considering the scope of an appeal under s. 11 of the Solicitors

(Amendment) Act 1994, stated as follows at paras. 3.2-3.3 of his judgement:

“…it must be emphasised that, within any broad category, there may be precise

rules which limit or define the exact way in which an appeal may legitimately

progress. It is, therefore, important not only that an appeal is expressly stated to

fall within some broad category, however described, but also that any variations

within that category are specifically identified. Default positions also need to be

identified and defined.

Subject to those caveats, it seems to me that one convenient way of categorising

appeals is the following:-

(a) a de novo appeal;

(b) an appeal on the record;

(c) an appeal against error, and

(d) an appeal on a point of law.”

44. About a de novo appeal Clarke J. said the following at para. 4.2:

“It seems to me that the critical characteristics of a de novo appeal are two-fold.

First, the decision taken by the first instance body against whose decision an

appeal is brought is wholly irrelevant. Second, the appeal body is required to

come to its own conclusions on the evidence and materials properly available

to it. The evidence and materials which were properly before the first instance

body are not automatically properly before the appeal body. It seems to me that,

by defining an appeal as a de novo appeal, any legally effective instrument

necessarily carries with it those two requirements.” 23

45. In relation to an appeal on the record, at para. 5.1 of his judgment, he observed:

“While the term ‘de novo appeal’ has a certain broad currency, the term ‘appeal

on the record’ is less widely used. However, it seems to me to be an appropriate

term to describe a recognised form of appeal which shares one, but not both, of

the fundamental characteristics of a de novo appeal which are identified in the

preceding section of this judgment. In an appeal on the record, the appellate

body must come to its own conclusions as to the proper result of the issues

before it without regard to the decision made by the first instance body.

However, and in contrast to a de novo appeal, the default position in respect of

an appeal on the record is that the evidence and materials which are properly

relied on by the appellate body are the same as those which were before the first

instance body.”

46. As is evident from the ordinary and natural meaning of s. 57 of the 1963 Act, the scope

of the appeal from the Controller is characterised, in particular, by the right of the High

Court under s. 57 to reach its own decision and substitute it for that of the Controller.

As was correctly highlighted by Diesel with reference to the line of authority beginning

with Philadelphia Storage Battery, a case in which the court considered a provision

equivalent to that provided for in s. 26(9) of the 1963 Act but in the context of the

Industrial and Commercial Property (Protection) Act 1927, the High Court is indeed

“untrammelled” by the decision of the Controller. However, as the other statutory

provisions earlier mentioned make clear, the court is far from untrammelled when it

comes to the evidence it can consider as the appeal is to be conducted, subject to special

leave, on the materials and or evidence that was before the Controller. It cannot

therefore be classified as a de novo appeal. 24

47. Also, the scope of an appeal under s. 57 of the 1963 Act is closely aligned with the

scope of the ordinary appeal from a decision of the High Court in that in the same way

that a party to such an ordinary appeal from the High Court cannot, without leave of the

court, raise an argument not made at first instance, likewise the objector on a s. 57

appeal is confined, save with leave of the court, to the objections it made before the

Controller.

48. Accordingly, using Clarke’s J. shorthand in Fitzgibbon for guidance, it is evident that a

s. 57 appeal may loosely be categorised as an “appeal on the record” insofar as the High

Court is not required to identify any fundamental error or series of errors in order to

displace the Controller’s conclusions. It is entitled to come to its own conclusions on

the facts and as to the relief to be granted. Such an appeal is, however, undoubtedly

broader and of a different character to an ordinary appeal from a decision of the High

Court. This is not only because the court is free to reach its own conclusions on the

evidence but also because the first instance decision maker may seek to participate in

the appeal. Nonetheless, when it comes to the evidence upon which it is required to

form its opinion, the High Court is limited to the evidence as it was before the

Controller. However, having established that the High Court exercises fully-fledged

appeal powers, the argument made by the Controller that pursuant to the decision in

Orange Communications Limited v. Director of Telecommunications Regulation (No.

1) [2000] 4 I.R. 136 the High Court must show deference to the Controller’s decision

finds no application. The High Court is under no such obligation. It is not restricted to

find an error in the Controller’s decision but can come to its independent conclusions

on the issues before it. 25

49. That being so, Diesel is correct in its submission that Hogan J. erred in law in

concluding that the scope of the appeal at issue was “indistinguishable” from an

ordinary appeal from a decision of the High Court. Such appeals are, after all, bound

by the decision in Hay v. O’Grady [1992] 1 I.R. 210 with the result that the appellate

court is precluded from making its own assessment of the evidence. This is not the case

in an appeal under s. 57.

50. What this means for the test to be applied where a party seeks liberty to adduce further

evidence will be discussed after having looked at the character of the test in Murphy

and the relevant jurisprudence regarding ss. 57 and 26(9).

The Murphy test

51. In Murphy, Finlay C.J. proposed that a comparatively restrictive test should govern

applications to admit additional evidence on appeal where that evidence was in

existence at the time of the first instance decision. At p. 164 he observed:

“1. The evidence sought to be adduced must have been in existence at the time of

the trial and must have been such that it could not have been obtained with

reasonable diligence for use at the trial;

2. The evidence must be such that if given it would probably have an important

influence on the result of the case, though it need not be decisive;

3. The evidence must be such as is presumably to be believed or, in other words,

it must be apparently credible, though it need not be incontrovertible.” 26

52. To understand why the Murphy test is restrictive it is important to identify the policy

objectives that underpin the decision. Of particular significance for the present purposes

is that litigants can expect that litigation before the courts is final once proceedings are

concluded. This is not only true for the litigation itself but also in respect of the evidence

gathering process, see e.g. Hogan J. in Student Transport Scheme Limited v. The

Minister for Education and Skills and Another [2012] IEHC 425, and Laffoy J. in

Unilever v. Controller of Patents & Sunrider Corporation [2005] IEHC 426. In the

course of his judgment in Student Transport Scheme Limited, Hogan J. identified the

importance of these objectives by reference to the following extract from O’Donnell

J.’s judgment in Emerald Meats which he considered had eloquently explained these

policy considerations. At para. 36 of that judgment O’Donnell J. observed:

“The rules on the admission of fresh evidence on an appeal are quite strict. This

is as it should be. There are very few cases in which the losing side does not

regret that different witnesses were called, evidence given or points made either

in cross-examination or in submission. But a trial is not a laboratory experiment

where one element can be substituted and all other elements maintained and a

different outcome obtained. It is important that parties are aware of the finality

of litigation, and bring forward their best case for adjudication. Cases develop

organically and unpredictably. One of the benefits which litigation brings at

some cost is certainty. A party may reasonably dispute the merits of a

conclusion, but cannot doubt that it is a conclusion. The court must make its

decision on the evidence and case advanced on the day, or in this case, over the

17 days. It is partly for this reason that the rules and practice of the courts go to

such elaborate lengths to attempt to ensure that both sides are fairly apprised of 27

what is in dispute and have an adequate opportunity to prepare for the litigation.

It is also why appellate courts have developed rigorous tests on applications to

admit fresh evidence. There are few cases which in hindsight could not be rerun

with different witnesses, evidence, arguments, or advocates, but to consider that

such a course is in the interests of justice is to engage in the delusion that endless

litigation is a desirable rather than a tormented state.”

53. However, the high hurdle set by the test in Murphy and its underlying policy

justifications must be put in their proper context. Murphy is not some type of legal

straightjacket. Albeit rigorous in its requirements, Murphy will yield where the

appellate court cannot carry out an effective and just review of the decision. That the

test enjoys some flexibility is apparent from the decision of Hogan J. in Student

Transport Scheme Limited where he applied the reasoning of O’Donnell J. in Lough

Swilly Shellfish Growers Co-operative Society Limited & Atlanfish Limited v. Bradley

& Ivers [2013] IESC 16 concerning the circumstances in which an appellate court might

admit a new argument on an appeal to the circumstances in which new evidence might

be admitted on an appeal. As Hogan J. put it in Student Transport Scheme Limited, the

law aims to strike a balance between “the need to protect the orderly administration of

appellate justice and the interests of finality and certainty on the one hand and the need

to accommodate exceptional or unusual circumstances in the interests of fairness on the

other”.

What has been said in the authorities to date regarding the test to be applied on an application to admit new evidence on a trade mark appeal?

54. The courts have not directly addressed what test should be applied to an application to

admit new evidence in a s. 57 appeal. However, the suitability of a strict, Murphy-like 28

test to guide the court on an application to admit new evidence on a s. 57 appeal was,

in my view, indirectly endorsed by Laffoy J. in her decisions in Unilever and Bus

Eireann v. The Controller of Patents, Designs and Trade Marks [2008] 1 I.L.R.M. 428.

55. Unilever was a case in which the Controller dismissed Unilever’s opposition to the

defendant’s application to register the trademark ‘SunSmile’. On appeal, Unilever

sought to introduce two new affidavits and the Controller objected. The defendant

approached the application on the basis that Unilever had to meet the Hunt-Wesson

criteria rather than the somewhat more restrictive test in Murphy and in so doing argued

that the public policy dimension which arose for consideration in Hunt-Wesson, did not

arise on the facts under consideration.

56. In rejecting Unilever’s application, Laffoy J. acknowledged that there was no authority

as to when it would be appropriate for the court to grant special leave to allow a party

to an appeal bring forward further material on a s. 26(9) application. Having been

referred to the decision in Hunt-Wesson, the following, which includes some text

already referred to earlier in this judgment, is what she stated at para. 5 of her judgment:

“Apparently, there is no authority in this jurisdiction on when it is appropriate

to grant special leave to bring forward further material under s. 26(9). Counsel

for Sunrider referred the court to a decision of the English High Court on a

similar application under a statutory provision the substance of which is

precisely the same as s. 26(9). In that case, Hunt-Wesson Inc.’s Trade Mark

Application [1996] R.P.C., 233, which, as here, was an application by an

opponent appealing against the dismissal of the opposition, Laddie J. listed the

factors which he considered likely to be relevant on an application of this type 29

but made it clear that the list was non-exhaustive. The factors he identified were

as follows:

(i) Whether the evidence could have been filed earlier and, if so, how much

earlier.

(ii) If it could have been, what explanation for the late filing had been

offered to explain the delay.

(iii) The nature of the mark.

(iv) The nature of the objections to it.

(v) The potential significance of the new evidence.

(vi) Whether or not the other side would be significantly prejudiced by the

admission of the evidence in a way which could not be compensated,

e.g., by an order for costs.

(vii) The desirability of avoiding multiplicity of proceedings.

(viii) The public interest in not admitting on the register invalid trade marks.

As a general proposition, I think that the sum of the foregoing factors, if they

were accepted as being applicable in this jurisdiction, would provide for a more

liberal regime for the introduction of evidence on an appeal from a decision of

the Controller than the principles laid down by the Supreme Court in Murphy v.

The Minister for Defence [1991] 2 I.R. 161, in relation to the admission of

further evidence on an appeal from the High Court to the Supreme Court. This

application has been addressed by Sunrider on the basis that the onus on

Unilever is to meet the criteria in the Hunt Wesson Inc. case rather than the more 30

arduous requirements of Murphy v. The Minister for Defence. Accordingly, that

is the basis on which the court will decide the issue.”

57. In concluding her judgment, Laffoy J. went on to say as follows:

“In summary, I am not satisfied that Unilever has discharged the onus of

establishing that circumstances exist which would justify the court in giving

leave to adduce affidavits sworn by Mr. O’Sullivan and Ms. Quinn in the form

of the drafts on the hearing of the appeal. Apart from that, I am of the view that

it would create a bad precedent to grant leave on the facts of this case. It would

leave an impression that an opponent, in deciding what evidence to adduce on

the opposition before the Controller, could take comfort from the fact that it

would have an opportunity to mend its hand on an appeal to this court, having

seen the decision of the Controller. That is clearly not what the legislature

intended in enacting s. 26(9).”

58. What is clear from her judgment is that Laffoy J. certainly did not endorse the Hunt-

Wesson test as that which should be applied on an application to admit new evidence

on a trademark appeal. She applied the test because it was relied upon by the parties

and did so in order to impress upon them that regardless of whatever test was deployed,

the new evidence would not be admitted.

59. What is also clear is that she is critical of a more liberal test. She appears to view s.

26(9) of the 1963 Act as never having been intended to provide an opportunity to a

party to mend their hand on an appeal, having had the benefit of sight of the Controller’s

decision. Although her observations in that regard are by no means an outright

endorsement of the Murphy test, they strongly imply that she did not favour a regime 31

which would permit a party to introduce evidence which they could reasonably have

put before the Controller, thus giving them an opportunity to mend their hand.

60. Another decision that helps to characterise the test to be applied on an application to

introduce new evidence on an appeal under s. 57 of the 1963 Act, is that of Laffoy J. in

Bus Eireann. Under consideration was an appeal to the High Court pursuant to s. 79 of

the Trade Marks Act 1996 (“the 1996 Act”) against the refusal of the Controller to grant

the applicant to introduce additional evidence on the hearing before the Controller.

Pursuant to the rules made under the 1996 Act (“the 1996 rules”) a party opposing

registration has three months to file such evidence as they intend to rely upon (r. 20(1),

and the applicant has three months to reply (r. 21). The opposition then has a further

two months within which they may reply to the applicant’s evidence (r. 22). Thereafter,

the Controller, under r. 23, has the power to accept further evidence.

61. The Controller, in refusing the application, considered that he could only exercise his

power to admit new evidence in “exceptional circumstances” highlighting the fact that

the purpose of the rules outlined above is that they bring evidence filing to a definite

conclusion. In so deciding the Controller relied upon some of the factors identified in

Hunt-Wesson, an approach which the appellant described as severely flawed. The

appellant maintained, inter alia, that as the application to introduce additional evidence

was made at first instance, rather than on an appeal, that different and less stringent

principles applied.

62. Although the appeal was of an entirely different character to the one under consideration

here, being an appeal from what might loosely be described as an interlocutory order

made by the Controller at first instance, it is what Laffoy J. noted regarding the scheme 32

provided for in the 1996 rules that is important. The following is what she stated at pp.

438-439:

“(2) Under rule 20 (1) it is not open to an opponent in adducing evidence in

support of his opposition to hold in reserve part of the factual material on which

he intends to rely, with a view to including it in his rule 22 evidence. The scheme

of the 1996 rules requires full disclosure by the opponent of the factual evidence

available to him at the rule 20 stage, if he wishes to rely on it. Having regard to

the plaintiff status of the opponent in the opposition proceedings, to permit him

to adopt a minimalist approach at rule 20 stage and a more expensive approach

at rule 22 stage and could give him a tactical advantage and could be unfair to

the applicant.

(3) the entitlement of an applicant under rule 21 is to adduce evidence “in

support of the application”. It is not, as is implicitly suggested in the

submissions of counsel for the applicant, merely a right to adduce evidence in

response to the opponent’s evidence. Therefore, when exercising is entitlement

under rule 21, it is not open to the applicant to keep in reserve evidence available

to him at that stage which he may wish to rely on sport was application, in the

hope of getting it in on foot of leave granted under rule 23…”

63. Of particular importance in the context of the within appeal is that Laffoy J. went on to

stress that the policy considerations which underlie the 1996 rules are that the evidence

filing phase of proceedings before the Controller in respect of opposition to an

application for registration of a trade mark should generally be concluded in the strict

three stages provided for. To allow either side to stray beyond the parameters of what

is expressly allowed may give rise to a risk of unfairness. Having both had equal 33

opportunity to review and respond to the other’s evidence, it would have to take an

extraordinary set of circumstances to allow either party to avail of another opportunity

to file evidence.

64. It would therefore seem to apply with even greater force that a restrictive test should

apply on appeal where a party has failed to apply to have that additional evidence

admitted before the Controller after the three-stage process had been concluded. Also,

in light of the additional restrictions inherent in the appellate jurisdiction, it would be

wholly counter-intuitive to have a more liberal test applied on appeal where the test at

first instance is justifiably strict.

65. Insofar as Laffoy J. referred to the test in Hunt-Wesson, she did so only for the purpose

of confirming that the Controller had correctly taken into account whether the evidence

sought to be introduced could have been filed earlier, and if it could, the explanation

proffered for not doing so. And, she cautioned against the Controller attempting to

assess the potential significance of the proposed evidence, as would be the case if either

the Murphy or Hunt-Wesson test applied, because to do so would smack of prejudgment.

66. For completeness, it should be noted that Laffoy J. allowed the appeal and admitted the

additional evidence for the consideration of the Controller having concluded that the

opponent had skilfully, but insidiously, placed before the Controller evidence and

assertions which the applicant had not been given an opportunity to respond to. And,

given that this evidence was directed to establishing that the applicant had acted in bad

faith as a matter of basic fairness the applicant had to be afforded an opportunity to

respond. 34

The test to be employed in an application under s. 26(9)

67. Having established (i) the scope of a s. 57 appeal, (ii) the character of the test in Murphy

and (iii) reviewed the relevant case law, we can tie these threads together and answer

the question as to what kind of test should be applied to an application to admit new

evidence in an appeal from the Controller.

Scope of Appeal

68. First, looking at the scope of an appeal under s. 57, it takes the form of an appeal based

on the evidence already given and arguments heard before the Controller. Thus, whilst

the High Court is free to reach its own decision on a s. 57 appeal, from an evidential

point of view, the court’s position is the same as that which pertains in respect of all

other appeals governed by the Murphy test. In both instances, the court remains

restricted to a consideration of the evidence that was before the first instance decision

maker and this is the defining characteristic of both types of appeal. That being so, the

rationale that underlies the test in Murphy holds good in respect of a s. 57 appeal. There

is, in my view, no reason why a party to a contested hearing before the Controller,

concerning the registration of a trademark, should not be called to account for their

failure to put all relevant evidence before the Controller in the same way as a party to

High Court litigation will be called to account should they fail to bring forward all of

their evidence at the first instance hearing.

69. As was rather engagingly observed by Lewison L.J. at para. 114 of his judgment in

Fage UK Ltd. v. Chobani UK Ltd. [2014] EWCA Civ. 5, a trial is not a dress rehearsal.

It is the first and last night of the show. And, whilst this observation was made in the 35

context of the entitlement or otherwise of an appellate court to interfere with a finding

of fact made by a court of first instance, it is an observation entirely consistent with

what was stated by O’Donnell J. in Emerald Meats concerning the importance of a party

bringing forward their best case for adjudication at first instance, a sentiment also

echoed strongly in the judgment of Laffoy J. in Unilever.

70. Furthermore, there is nothing in the 1963 Act which suggests that a less rigorous

approach to that proposed in Murphy should be applied on an application to admit new

evidence on a s. 57 appeal compared to an appeal from the High Court. Whilst it is true

to say that the wording of s. 26(9) anticipates that new evidence will be admitted on

such an appeal subject to “special leave” the provision does no more than bring the

procedure and threshold to be deployed into line with that which pertained at the time

in respect of an appeal from the High Court to the Supreme Court under O. 58 r. 8 which

provided:

“The Supreme Court shall have all the powers and duties as to amendment and

otherwise of the High Court, together with full discretionary power to receive

further evidence upon questions of fact, such evidence to be either by oral

examination in court, by affidavit, by deposition taken before and examiner or

Commissioner. Such further evidence may be given without special leave upon

any appeal from an interlocutory judgement or order or in any case as to matters

which have occurred after the date of the decision from which the appeal is

brought. Upon any appeal from a final judgement or order such further evidence

(save as to matters subsequent as aforesaid) shall be admitted on special grounds

only, and not without special leave of the Supreme Court.” 36

Public Policy

71. Diesel submits that the test in Murphy should be displaced by the test in Hunt-Wesson

as the latter better accommodates the public policies underlying the trade mark

legislation. First, it submits that the Murphy test should not have been applied to its

application to admit further evidence under s. 26(9) of the 1963 Act, because

considerations such as the need to avoid multiplicity of proceedings or achieving

finality in litigation do not apply or are less relevant in trademark appeals. This

submission is, in my view, misplaced. In making this argument, Diesel relies upon the

fact that if it fails in its appeal it is entitled, in any event, to apply again to register its

mark. This, Diesel submits, is a factor worthy of separate consideration and one which

would be weighed in the court’s discretion if the test in Hunt-Wesson was applied.

72. I am satisfied that the principle of finality in litigation is just as important in trademark

appeals as in any other type of appeal. It is clear that the Oireachtas intended that the

hearing of an appeal from a decision of the Controller by the High Court would bring

finality to opposition proceedings. That objective is not undermined in any way by the

fact that the statutory scheme allows an applicant to make a later application for

registration of their mark having failed on an earlier occasion. However, the intention

of the Oireachtas in so providing was not to dispense with any policy of finality. It is to

cater to a possible change in circumstances between the original and later application.

That this is so is obvious from the fact that any application for registration of a

trademark is to be assessed as of the date when it is filed. Thus, in the present case, any

future application as might be made by Diesel will have to be made under the 1996 Act, 37

and the protection afforded, should its application prove successful, will date from the

filing of that application and not from 1994.

73. For these reasons, I am not satisfied that a court, on an application to admit new

evidence on an appeal from the Controller should, as proposed in Hunt-Wesson, factor

into its considerations the fact that the applicant will be entitled to make a fresh

application to register its mark at a later date. A new application should be used for the

purpose for which it was intended, rather than as a threat to be deployed to force upon

an opponent and the court on appeal, evidence which it might adduced at first instance.

74. I also reject the submission advanced by Diesel that Hogan J. should have rejected the

Murphy test in favour of that identified in Hunt-Wesson because the latter test allows

the court factor into its discretion, the public interest in insuring that invalid trademarks

be removed from the register.

75. First, this particular public interest consideration does not apply in the present case in

circumstances where what is under appeal is the Controller’s refusal to register Diesel’s

mark. There is no, what might be described as “consumer protection” element. It is a

purely inter partes dispute with Diesel saying it wants to register its mark and Montex

objecting on the basis that it is too close and confusing to its mark. The Controller was

only concerned with whether or not Montex had a legitimate objection to Diesel’s

registration of its mark.

76. However, even if the case was otherwise, in my view, the test in Murphy could yield to

such a consideration if to do otherwise would affront the proper administration of

justice. That is not to say that some degree of exceptionality would not have to be

established as otherwise the clear intention of the Oireachtas that the appeal be 38

determined on the evidence that was before the Controller could be defeated on any

appeal, provided it was against a decision made by the Controller to register a mark in

the face of objection. I would instance in this regard the possibility that the first leg of

the Murphy test might yield if, for example, the applicant was in a position to establish

that a fraud had been perpetrated on the Controller in terms of the evidence adduced to

support registration.

77. I also reject Diesel’s argument that Hogan J. erred in law in applying the Murphy test

because it is not capable of accommodating the underlying public policy of protecting

the goodwill and hard work of those entitled to have their mark registered. First, if this

was to be a factor capable of being relied upon by an applicant seeking to introduce new

evidence on appeal, it could be invoked on every appeal by a party who had failed in

their application for registration and were to contend that the new evidence could

possibly lead to a reversal of that decision. Second, and more importantly, the very

same statutory regime makes it clear that the policy of protecting goodwill and hard

work is sufficiently catered for. The extensive exchange of evidence discussed

previously, as well as the thorough examination of the registration by the Controller, is

where the law vindicates a party’s rights arising on foot of this policy. Thus, when

deriving a test to apply to an application to admit further evidence, the court must come

to the conclusion that any concerns in this regard have been addressed.

78. For these reasons, I am not satisfied that there is any need or justification for some

bespoke test, such as that identified in Hunt-Wesson, when it comes to considering

whether or not the High Court should admit new evidence on a trademark appeal. There

are, in my view, strong public policy as well as other reasons for ensuring that no less

rigorous a test than Murphy is to be deployed and it seems to me that there are factors 39

which are part of the Hunt-Wesson test which form a test that is somewhat less rigorous

than Murphy. Insofar as anything unique or special should arise on an application under

s. 26 (9) that is not common to non-trademark appeals, the jurisprudence which has

evolved since the decision in Murphy makes clear that the test has sufficiently

flexibility, if required, to ensure that it is not applied in a manner which would produce

a result which would affront the interests of justice.

Murphy should be applied strictly

79. And whilst not strictly relevant to deciding which test ought to be applied on an

application to admit new evidence on a s. 57 appeal, it might be said that not only should

the broader and perhaps less rigorous Hunt-Wesson test not apply, but that Murphy

should be fairly strictly applied on an appeal of the type under consideration,

notwithstanding the clear statutory provision that anticipates that there will be

circumstances where it will be appropriate to admit new evidence on trade mark appeal.

I say this for two reasons.

80. First, the court, on the hearing of an appeal under s. 57 stands into the shoes of the

Controller and enjoys the same discretion enjoyed by the Controller when it reaches its

decision. It does not, however, have the power to remit the proceedings back to the

Controller for further consideration in the event of new evidence being admitted. Thus,

if the court admits new evidence on the hearing of an appeal, and reaches a result

different to that made by the Controller influenced by that evidence, the unsuccessful

party has no right of appeal against that decision, even though the legislation clearly

intended that the parties to a contested application for registration of a trademark would

have the opportunity to make their respective cases twice on the same materials. Hence,

there is a potential for serious prejudice which cannot be remedied, as is often the case 40

by an appropriate costs order and the remittal of the proceedings to the first instance

decision maker.

81. Second, the procedural regime provided for in the 1963 Act and the accompanying rules

is extraordinarily liberal, and is one which affords the parties engaged in opposition

proceedings, advantages which were certainly not available to the parties to personal

injuries litigation at the time Murphy was decided. It will be remembered that Murphy

was decided long before the parties to personal injuries litigation were obliged to notify

their opponent of the witnesses whom they intended to call or as to the substance of the

evidence to be advanced by their proposed expert witnesses. By way of contrast, the

statutory regime under consideration here is one which was designed to ensure not only

that both parties would know the arguments to be advanced by the other, but would also

be afforded sight of the evidence to be relied upon by their opponent before the

Controller would make his decision or, if there was to be an oral hearing, before that

hearing took place.

82. The 1963 Trade Mark Rules mirror those described already by Laffoy J. in Unilever.

Rule 35 requires a party who intends to oppose the registration of a trademark to give

notice of their intended opposition, and grounds of opposition, within one month of the

advertisement. Rule 36 gives the applicant two months to send a counterstatement,

setting out the grounds upon which they will rely in support of their application. Then,

r. 37 gives the opponent two months to file a statutory declaration containing the

evidence upon which they intend to rely on the hearing. And, r. 38 gives the applicant

two months then to file their evidence after which the opponent has one further month

to file evidence in reply. And, finally, r. 40 gives the Controller power to admit further 41

evidence on the application of either party prior to the hearing, as occurred in Bus

Éireann.

83. In enacting the aforementioned rules, it is clear that the Oireachtas intended that, where

there was opposition to the registration of a trademark that the evidence gathering

process should be at an end by the time the Controller engages with an opposition

hearing. And, it could hardly be clearer that the statutory scheme was one designed to

achieve the policy objectives noted by Laffoy J. in Unilever and Hogan J. in Student

Transport Scheme Limited.

84. Therefore the 1963 Trade Mark Rules, in my view, provide good reason why the

exceptions referred to by O’Donnell J. in Emerald Meats should be less likely to arise

on any such application. If the parties are confined to the evidence that they have

furnished to each other by way of statutory declaration, it is hard to see how the

proceedings could take the type of “unexpected turn” identified by O’Donnell J. which

might warrant relieving the applicant of their requirement to meet the first leg of what

is described as the cumulative three stage test in Murphy.

Application of Murphy to Diesel’s application 85. As the High Court judge correctly found that the evidence sought to be admitted by way

of new evidence was either available, or could have been obtained, at the time of the

making of the original application before the Controller, Murphy would dictate that

Diesel should fail in its application to admit further evidence. However, it is submitted

that even if that is so, Diesel could validly claim that there had been an unexpected turn

in the trial, of the type described in Emerald Meats, as would warrant the exercise by 42

the court of its discretion to excuse Diesel’s inability to meet the first leg of the test.

This unexpected turn is allegedly brought about by the fact that in 1998, as part of

Montex’s application for registration, the Controller ‘held in favour’ of Diesel and in

2013, as part of Diesel’s application only filed two years after Montex’s application the

Controller ‘held in favour’ of Montex despite the fact that both applications were heard

on essentially the same evidence bar the oral evidence given by Mr. McKenna for

Montex in Diesel’s application. For the following reasons, I am satisfied that this

argument must fail.

86. First, the alleged unexpected turn is not what is envisaged by Emerald Meats. The

grounding affidavit supporting the motion to introduce new evidence stated in relatively

simple terms that the application was brought as a direct response to the decision of the

Controller which, in upholding Montex’s opposition, had criticised the lack of evidence

advanced by Diesel. However, surprise at the Controller’s decision cannot be equated

to the type of surprise alluded to by O’Donnell J. in Emerald Meats. When O’Donnell

J. referred to an unexpected turn in the trial, what he no doubt had in mind was the type

of surprise that might be visited on a party by the introduction of a surprise witness or

evidence not already flagged in some way in the pleadings, particulars, discovery, or

exchange of witness statements or reports. And, as already stated earlier in this

judgment, it is difficult to see how, given that all of the evidence of the parties in

opposition proceedings is exchanged in advance of the Controller’s decision, that a

party is likely to be able to establish this type of surprise.

87. Second, the facts relied upon by Diesel to support what it claims to be something akin

to an “unexpected turn” do not emerge from anything that happened “in the trial” i.e.

when the proceedings were at hearing before the Controller. The facts relied on predate 43

and postdate the hearing before the Controller, concerning as they do, the decision in

Montex’s earlier application and the decision of the Controller in the present case.

88. Third, even if Diesel was entitled, by reason of what was stated by O’Donnell J. in

Emerald Meats, to contend that it could rely on the Controller’s decision and that made

on Montex’s earlier application as a basis upon which it might seek to adduce new

evidence, the facts simply do support the type of unexpected surprise contended for by

Diesel. To demonstrate that this is so, it is necessary to briefly refer to certain aspects

of both Montex’s proceedings and Diesel’s proceedings.

89. First of all, the decision with which the 2013 decision would have to be compared is

the judgment of O’Sullivan J. in the High Court appeal or the Supreme Court appeal in

the Montex proceedings and not the Controller’s decision in that case. This is so because

the High Court in a s. 57 appeal, as we now know, comes to its own findings of fact (as

was in fact argued by Diesel), replacing those made by the Controller.

90. Second, although at first blush it might seem that the Controller in ruling on Diesel’s

application had reached a contrary conclusion to that which had been reached on

Montex’s application, in spite of the fact that the two applications had been heard on

largely the same evidence, this is not in fact so. If one analyses the Controller’s 1998

decision and the judgments of the High Court and Supreme Court on appeal and

compares these to the Controller’s 2013 decision, no inconsistencies can be found, let

alone any “surprises”. First, the fact that both hearing officers/courts come to the

conclusion that, pursuant to s. 19 there is a likelihood of confusion between Montex’s

“DIESEL” and Diesel’s “DIESEL” is not contradictory. Indeed, it would have been

surprising had the Controller on the same evidence less than two years later found that

there was no longer any likelihood of confusion. 44

91. Third, as to the contention that the Controller and the court had made contradictory

rulings on the proprietorship issue concerning the “DIESEL” mark (s. 25(1)), both

O’Sullivan J. and the Controller found that Montex was the proprietor of the mark for

the purposes of s. 25(1). O’Sullivan J., however, exercised his discretion pursuant to s.

25(2) and found that Montex had not discharged the burden of showing that it had

acquired the mark bona fide. But both decision makers made the same finding of fact

regarding actual proprietorship.

92. Lastly, in relation to the Controller’s and the court’s findings regarding Diesel’s

position vis-à-vis ownership of the “DIESEL” mark, their respective conclusions are

also not contradictory. O’Sullivan J. found that Diesel had shown proprietorship of the

mark so as to enable it challenge Montex’s proprietorship claim, i.e. to show locus

standi, but both acknowledged Montex’s actual proprietorship of the mark.

93. In these circumstances, I am satisfied that Hogan J. was correct to conclude that no

exceptional circumstances had been established that would warrant the court departing

from the first requirement in the Murphy test. That being so, it is not necessary to

consider the evidence insofar as it concerns the second and third legs of the test. Having

failed the first leg of the test, this appeal must be dismissed.

Conclusion

94. Whilst it is true to say that the type of appeal provided for under s. 57 of the 1963 Act

is not, as was held by Hogan J., indistinguishable from that which prevails on an

ordinary appeal from a decision of the High Court, it does not follow that a less

restrictive test than that provided for in Murphy should be applied on an application to 45

admit new evidence under s. 26(9). The principles which underpin the decision in

Murphy apply equally well to applications to admit new evidence in trademark appeals

as they do to other types of appeal. The differences between them are not such as would

warrant any such departure.

95. If any issue of public policy concerning the trademark register was to arise on an

application to admit new evidence under s. 26(9) of the Act or it be established that

circumstances existed which would render it an affront to the fair and proper

administration of justice not to admit the evidence proposed, even if it was available

and could have been obtained with reasonable expedition for the hearing before the

Controller, the test in Murphy is not so inflexible that it could not yield so as to excuse

the applicant’s inability to meet the first of the Murphy requirements. As stated earlier

in this judgment, both the law and existing practice permits departures from the general

rule in terms of the admission of new evidence if the same is necessary in the interests

of justice.

96. Accordingly, Hogan J. cannot be stated to have applied the incorrect test when

considering Montex’s appeal against the judgment and order of Binchy J. And, in

circumstances where I am satisfied that he was correct to conclude that Diesel had

established no unexpected turn of events or anything sufficiently special or exceptional

as might fall within the proviso identified by O’Donnell J. in Emerald Meats, he was

correct not to excuse Diesel’s inability to meet the first leg of the Murphy test. In my

view, not only did Hogan J. apply the correct test to the application under consideration

but also, on the evidence, he was entitled to exercise his discretion so as to allow Montex’s

appeal and dismiss Diesel’s cross appeal.