In 1994, the Controller of Patents and Designs refused to grant trade mark rights in the word “Diesel” to Diesel SPA as it would lead to confusion as far as their products were concerned in circumstances where there were two separate Diesel brands operating in Ireland. This decision mirrored a decision by the Controller not to grant Montex Holdings Limited trade mark rights in the same word1.
Diesel SPA appealed the decision to the High Court and brought an application under Section 57 of the Trade Marks Act 1963 to admit new evidence at the hearing. The new evidence Diesel SPA wanted to admit sought to address the Controller’s criticism of the evidence provided in relation to the sale of its good in Ireland within the relevant period.
- Better copies of invoices submitted with its application;
- New invoices;
- Magazine advertisements;
- Proof as to circulation of the magazines;
- Affidavit evidence in relation to sales and reputation in Ireland;
- Affidavit evidence seeking to disprove Montex level of sales; and
- Documents of public record relating to the company.
The High Court (Binchy J), in following an English decision2, granted Diesel SPA’s application and departed from the established precedent for admission of new evidence set out by the Supreme Court in Murphy v Minister for Defence3. The Controller then appealed this decision to the Court of Appeal.
Murphy v Minister for Defence re-affirmed by Court of Appeal
In the Court of Appeal Judge Hogan set out the relevant statutory provisions which, due to the delay in bringing the case, were contained in the repealed 1963 Act 4. This Act5 and the Rules of the Superior Courts6 made it clear that any appeal was to be on the evidence that was before the Controller unless the High Court permitted the admission of further evidence. He then cited the rules for admission of new evidence set out by the Supreme Court (Finlay CJ) in Murphy v Minister for Defence:
- 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;
- 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;
- 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.
In finding for the Controller, Judge Hogan noted that the High Court found the evidence to be admitted existed at the time of the application to the Controller, was readily available and that no explanation had been offered for its omission.
Judge Hogan found that in effect, the Appellant was seeking to “bolster” its case and that this approach should not be permitted as it flies in the face of the principles laid down in Murphy. He opined that setting a more lenient precedent on admission of new evidence in an intellectual property dispute could lead to it being applied in non-intellectual property proceedings and such a precedent would serve to undermine the finality of court proceedings and the desirability that parties advance their entire case when given appropriate opportunity to do so.
This decision is important as it re-affirms the Court’s views on admission of new evidence and why it should only be permitted in very limited circumstances. Therefore, it is essential that in any trade mark application that the best possible case, supported with all relevant evidence, is put to the Controller as applicants will not be able to mend their hand on appeal to the High Court.
For further information please contact Michael Kelly firstname.lastname@example.org at Hayes solicitors.
1 Montex Holdings Ltd. v. Controller of Patents  IESC 36,  3 I.R. 85 - The Supreme Court upheld the Controller’s decision not to grant the trade mark.
2 Hunt-Wesson Inc.’s Trademark Application  RPC 233. Laddie J proposed a more lenient approach for admission of new evidence in trade mark disputes due to the public interest in ensuring that potentially invalid marks are not registered.
3 Murphy v. Minister for Defence  2 I.R. 161
4 This act has been replaced by the Trade Marks Act 1996
5 Section 25(7), Section 26 & Section 57 of the Trade Marks Act 1963
6 Order 94 Rule 48 of the Rules of Superior Courts
Share this article:
About the Author
Michael is a solicitor in the Commercial Litigation & Dispute Resolution team. He has experience advising commercial clients with respect to a wide variety of issues and has particular interest in Alternative Dispute Resolution. He has concluded a number of high value disputes by way of mediation and gained a wealth of experience acting as panel solicitor in relation to the defence of solicitor’s professional negligence claims.