Diesel fails to register marks in Class 25

In Diesel SpA v Montex Holdings Limited, the hearing officer has upheld, in part, oppositions against the registration of several DIESEL marks by Diesel SpA.

On January 11 1994 Diesel SpA applied to register four trademarks for the word 'Diesel' in Classes 16, 18, 24 and 25 of the Nice Classification, respectively, and four trademarks for the DIESEL logo in Classes 16, 18, 24 and 25, respectively (the applications were filed under the Trademark Act 1963 and, therefore there was no provision to file a multi-class application). On advertisement, the applications were opposed by Montex Holdings Limited pursuant to the 1963 act.  

The hearing officer upheld the oppositions filed in respect of the applications for the word 'Diesel' and the DIESEL logo in Class 25, but dismissed the oppositions in respect of the other six applications for the word 'Diesel' and DIESEL logo in Classes 16, 18 and 24.

In dismissing the oppositions against the applications in Classes 16, 18 and 24, the hearing officer dismissed the opponent’s argument that Classes 16, 18 and 24 are “‘typical brand extension classes’ for clothing companies who often produce printed materials, bags and textile products bearing their marks”. The hearing officer noted that the opponent had not produced any evidence or even claimed that it had used its DIESEL marks on any goods other than clothing. The hearing officer stated that:

“the fact that other clothing companies have extended their brand to other goods, unrelated to clothing, cannot form the basis for reserving the opponent’s clothing trademark for use on other goods, on the off-chance that it may someday decide to expand its business into new areas of trade.”

In upholding the oppositions in Class 25, the hearing officer noted that, when a business intends to adopt a trademark, “it behoves that business to undertake a reasonable preliminary enquiry to establish whether or not the mark in question is available for use or is likely to conflict with that of a pre-existing enterprise”. However, the hearing officer also noted that:

“it cannot be the case that an individual trademark registered in a single foreign country must be held in reserve in Ireland on the off-chance that the proprietor of that foreign mark, just might someday, expand its business into Ireland”.

The hearing officer distinguished the current case from the decision of the Irish Trademarks Office in LITTLE CAESARS (written grounds dated November 2001), where he noted that even a cursory search would have uncovered extensive references to the earlier rights of the opponent in that case. 

The current decision is of particular note as the hearing officer exercised its discretion under Section 92 of the Patents Act 1992, which provides that evidence may be taken viva voce (a Latin phrase literally meaning "with living voice”). In this opposition, the applicant, upon receipt of the opponent’s evidence, requested that the controller make a direction that evidence be taken viva voce from Patrick McKenna, a deponent of one of the statutory declarations filed on behalf of the opponent, and that the deponent be available for cross-examination in respect of his viva voce evidence.

The deponent at issue had given evidence as to how the opponent came to adopt the name Diesel. The applicant claimed that it was essential to a fair adjudication of the oppositions that it be given an opportunity to test the veracity of the version of events which had been advanced by this deponent.

The applicant also claimed that the evidence of the deponent was inadmissible as it was hearsay and the opponent had not adduced this evidence in previous proceedings involving the parties. The hearing officer held that the deponent’s evidence could not be considered to be mere hearsay and the fact that the opponent chose not to address how it came to use its DIESEL mark in other proceedings cannot debar it from addressing the issue in these proceedings.

In addition, the hearing officer noted that, under the Trademark Rules 1963, the opponent has an explicit right to respond to matters raised by the applicant in evidence. The hearing officer noted that the applicant had in its evidence emphasised the opponent’s silence on why it chose to use the DIESEL mark; therefore, the hearing officer held the applicant had provided the basis for the opponent to address this in its reply.  

Colette Brady, DFMG Solicitors, Dublin