Court of Appeal allows appeal confirming Controller's refusal of Diesel trademark registration due to confusion.

COURT OF APPEAL

IN THE MATTER OF THE TRADE MARKS ACT 1963

AND IN THE MATTER OF THE TRADE MARKS ACT 1996

AND IN THE MATTER OF APPLICATIONS NUMBER 177240 and 177245

DATED 11 JANUARY 1994

PURSUANT TO THE TRADE MARKS ACT 1963

BY DIESEL SPA FOR REGISTRATION OF DIESEL AND DIESEL (DEVICE) AS

TRADE MARKS IN CLASS 25 OF THE REGISTER OF TRADE MARKS

Neutral Citation Number: [2025] IECA 157

Court of Appeal Record No: 2024 180 & 2024 181

High Court Record No. 2013 641 SP

APPROVED - NO REDACTION NEEDED

The President

Allen J. Hyland J.

BETWEEN/

DIESEL SPA

PLAINTIFF/ RESPONDENT

- AND -

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS

FIRST DEFENDANT/ APPELLANT

AND

MONTEX HOLDINGS LIMITED

SECOND DEFENDANT/ APPELLANT

JUDGMENT of Ms. Justice Hyland delivered on the 8 day of December, 2025

1. The principal judgment in these proceedings was delivered on 28 October 2025 [2025] IECA 211. This supplemental judgment addresses both the costs of the proceedings and the appropriate form of Order.

2. The position of the Controller is simple: his Decision should be confirmed and there should be no order for his costs.

3. As between Montex Holdings Limited (“Montex”) and Diesel S.p.A. (“Diesel”), there is a dispute both as to costs and the form of the Order.

4. In respect of costs, Montex argues it was successful in its appeal and, following s. 169 of the LSRA 2015, it is entitled to an order for costs. In its submissions on the issue of costs following the judgment, it sought an order that Diesel pay the costs of the proceedings, including any reserved costs, and the costs of the High Court hearing, of the application for leave to appeal the High Court judgment and Order, and of the appeal.

5. In its submissions, Diesel recalled that in its Notice of Appeal, Montex only sought an Order for the “costs of the hearing in the High Court” and of the appeal, and suggested excluding from the Order the “costs of the proceedings including any reserved costs” on the basis that those costs had not been identified, and that Montex could not seek costs beyond those sought in the Notice of Appeal without providing any detail of same.

6. The position is straightforward: Montex has succeeded in its appeal and is entitled to its costs. The clear intention of the reference to the “costs of the hearing in the High Court” in the Notice of Appeal was to distinguish between the costs at High Court level and those at appeal level, and to make it clear that Montex was looking for both. It would be excessively formalistic to interpret the Notice of Appeal in such a way as to exclude a certain portion of Montex’s costs in the High Court. Montex is entitled to its costs, subject to adjudication in the normal way if agreement cannot be reached. Accordingly, an Order should be made in the following terms: An Order that the Plaintiff/Respondent do pay to the Second Named Defendant/Appellant the costs of the within proceedings in the High Court and the Court of Appeal, including reserved costs, to be adjudicated in default of agreement.

7. The second point relates to the form of the Order. Diesel notes that s. 57(1) of the Trademarks Act 1963 does not explicitly give jurisdiction to the Court of Appeal to confirm, annul or vary the decision of the Controller, with that jurisdiction instead being conferred on the High Court. However, it takes the view that remitting the matter to the High Court would be inefficient and therefore is not opposed to this Court making an Order under s. 57(1). Neither of the other parties, including the Controller, take a different view. I am satisfied that on an appeal against a decision of the High Court in these circumstances, the Court of Appeal has jurisdiction to confirm, annul or vary the

decision of the Controller.

8. There is a dispute between the parties as to the basis for confirming the Controller’s

decision. Diesel suggests the Order should be in the following terms:

The appeal from the High Court Judgment and Order, of 8 December

2023 and 12 June 2024 respectively, be allowed and the decision of the Controller of Patents, Designs & Trade Marks refusing registration to trade mark application numbers 177240 and 177245 on the basis that they offend against s. 19 of the Trade Marks Act 1963 be confirmed.

9. As per Diesel’s proposed wording, the decision of the Controller would be confirmed solely on the ground that the registration offends against s. 19 of the Trademarks Act i.e. confusion. Diesel justifies its stance on the basis that paragraph 108 of the principal judgment refers to the Court confirming the decision of the Controller on the basis that the registrations in question offend against s. 19.

10. Montex takes a different view, noting that the Court upheld the appeal both on s.19 grounds and on the basis that Montex was the proprietor of the mark (though for different reasons to the Controller). It proposes that the Order should simply confirm the decision of the Controller and should contain an Annex setting out questions 1A, 1B, 2, and 3 referred by the High Court, together with the paragraphs encapsulating the Court’s disposal of those issues, presumably to emphasise the Court’s reasoning.

11. There is a difference between the Controller’s reasoning and that of this Court insofar as proprietorship of the mark is concerned. The Controller concluded that neither the High Court nor the Supreme Court in the first set of proceedings between Diesel and Montex came to a conclusive decision regarding the proprietorship of the trademark; considered the issue afresh; and, for the reasons given in his decision, concluded that Diesel were not the proprietors of the mark.

12. On the other hand, the judgment delivered by this Court concludes that the question of proprietorship is res judicata by reference to the judgment of O’Sullivan J. in Montex Holdings Ltd. v. Controller of Patents [2000] 1 I.R. 577, where he held that Montex was the proprietor of the marks. The basis for this conclusion has been set out fully in the principal judgment, including in the summary of the judgment at paragraphs 3 and 4.

13. The proposed wording of the Order offered by Diesel, focusing as it does only on the s.

19 issue, and on one paragraph of the judgment to the exclusion of all others, fails to reflect the totality of the judgment and therefore cannot be accepted. Equally, the form proposed by Montex is unnecessary, as the reasons for the outcome of the case are contained in the principal judgment and do not require to be repeated in an Annex to the Order.

14. In the circumstances, I conclude an Order should be made in the following terms: An Order that the appeal from the High Court Judgment and Order, of 8 December 2023 and 12 June 2024 respectively, be allowed and the

decision of the Controller of Patents, Designs & Trade Marks refusing registration to trade mark application numbers 177240 and 177245 be confirmed.

15. Since this judgment is delivered electronically, I am authorised by Costello P. and Allen

J. to state that they agree with it and with the orders proposed above.

16. Because Diesel have been unsuccessful in the points it made both on the costs and the form of Order, Montex is entitled to the costs incurred by it since the date of the principal judgment, to be adjudicated in default of agreement.