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1. The Plaintiff (hereinafter “the Applicant”) applied to the First Defendant (hereinafter “the Controller”) on the 18th of September 1992 to register the word “DIESEL” as a trademark in part A of the Register of Trademarks for use in connection with jeans, articles of outer and under clothing, headwear, scarves and footwear.

2. The Second Defendant (hereinafter “the Opponent”) filed Notice of Opposition on the 19th of September 1994 which became the subject of a hearing before the Controller on the 23rd of March 1998.

3. On the 22nd of April 1998 the Controller notified the parties that he decided to uphold the Opposition and refuse registration of the mark and by written decision dated the 1st of July 1998 the Controller set out the grounds of his decision and the evidence produced to him.

4. The Applicant appealed by Special Summons dated the 27th of August 1998 which was grounded on an Affidavit of Michael Heery. In addition an Affidavit has been filed in these proceedings by the Controller.

5. At the hearing before the Controller the Opponent criticised a number of the statutory declarations filed on behalf of the Applicant for want of correct form; they alleged that the Applicant failed to show that they were the owners of the mark and further alleged that the Applicant failed to show that registration would not be likely to cause confusion so that the mark should not be registered given that the onus lay on the Applicant to satisfy the Controller on this point.

6. The Applicant, for their part, claimed that the Opponent failed to show a sufficient user by them of the mark in this country to give them standing as Opponents.

7. The Controller decided that the want of form in the statutory declarations was a minor technical error which could be overlooked. He held, further, that the Applicant had established as a matter of probability that they were the owner of the mark; further, that the Opponent had established a sufficient user to entitle them to oppose and he further held that the use of the mark would no doubt cause deception and confusion amongst a substantial number of persons because an identical mark is being used for essentially the same goods in the same class. Accordingly, the Controller upheld the Opposition and refused the registration stating that the mark proposed fails to meet the requirements of Section 19 and also that the refusal was in exercise of the discretion conferred on him by the Act.

8. The Applicant appealed this decision insofar as it found that the mark failed to meet the requirements of Section 19 and also insofar as the refusal was based on the Controller’s discretion.

9. Prior to the hearing, the Solicitors for the Opponent wrote to the Applicant’s Solicitors stating that they intended to raise all issues in the appeal which had been opened before the Controller.

10. The right of the Opponent so to do was challenged by the Applicant before me.

11. In this connection the Opponent relied on Order 94 Rule 48 of the Rules of the Superior Court which so far as relevance specifies that: “Every such appeal to the Court shall be by way of rehearing..” .

12. In response the Applicant referred to Section 38(2) of the Courts of Justice Act, 1936 which in similar terms but submitted that an Appellant had a right to limit the ambit of an appeal and referred to Scarson -v- Maguire (Irish Law Times Reports: Volume page 200) where O’Byrne J., held that where a defeated Defendant appealed only his counterclaim, he was estopped from pleading that he was not guilty of negligence as the decree on the claim against him constituted an estoppel on the record. The learned judge did, however, extend time to serve notice of appeal as regards that decree.

13. All issues were fully opened and argued before me and I made it clear in the course of the hearing that I was prepared to permit the Opponent raise all issues which were canvassed before the Controller.

14. He explained that the mark was first owned by Monaghan Textiles Limited of which company he was also a director. The mark was used by that company and another, Banner of Ireland Limited, both of which companies were subsidiaries of Beon Investments Limited which in 1982 was acquired by Mitzi Limited. Banner subsequently changed its name to Mitzi Monaghan Limited.

15. The Applicant acquired the mark and attached goodwill from the Receiver of Monaghan Textiles Limited which had gone into receivership on the 10th of February 1988. He exhibited some invoices in respect of purchases of raw materials for DIESEL jeans predating the 10th of May 1982 (being the date of first use in Ireland claimed by the Opponent) and also some invoices in respect of sales of DIESEL jeans which, again, predate the Opponent’s first claimed use.

16. Furthermore, he made the serious allegation that:-

17. The earliest invoice exhibited on behalf of the Opponent is dated the 10th of May 1982. This declaration claims that the “DIESEL” were sold by the Opponent in Italy, Denmark, Sweden, Austria, Germany, Switzerland, Holland, France, the U.K. and the U.S.A. all prior to November 1979 - the Applicant’s first claimed use being in that year (the earliest exhibited invoice being the 8th of February 1980).

18. He refers to a list of retailers exhibited to Michael Heery’s declaration and criticises the latter’s description of sales being “throughout the State” as the vast majority of the retailers listed:-

19. I note in passing that an examination of the relevant exhibit shows the following numbers of retailers in the following locations:-

20. Donegal - 5; Mayo - 5; Offaly - 3; Longford - 2; Meath - 2; Cork County - 2; Cork City - 2; Galway County - 2; Galway City - 2; and 1 each for Cavan, Clare, Tipperary and Dublin City.

21. The Declarant exhibited a list of publications in which the Opponent’s advertisements were published and also repeated his serious charge in relation to the Applicant’s bona fide as follows:-

22. He alludes to part of the Applicant’s publicity material which refers to “shipyards from Gdansk to Maine” and draws the inference that the Applicant is seeking to trade on the Opponent’s international reputation.

23. This serious charge was first made by Renzo Rosso in his declaration of the 22nd of February 1995. He pulled no punches. He alleged that the Applicant “ are not the bona fides proprietors of the trademark DIESEL in Ireland”.

24. He gave a reason:-

25. Almost a year later to the day, Michael Heery on behalf of the Applicant made a declaration in response to that of Renzo Rosso. In his declaration Michael Heery criticises some aspects of the declaration of Renzo Rosso including an allegation made at paragraph 9 thereof (that is the paragraph immediately following that in which the charge of lack of bona fides is made) to the effect that the Applicant use of the mark “has been insignificant and therefore insufficient for the Applicant to have acquired a reputation in the market”. Michael Heery in his replying declaration says: “I categorically refute these claims” and “Indeed, would suggest that these claims are in fact true of the Opponent”. He does not, however, deal with the serious allegation of lack of bona fides.

26. It is to be recalled that Michael Heery was a Director of Monaghan Textiles Limited, which was the Company which initially decided to use the mark in connection with the sale of jeans and so forth in this country. He was therefore in a position to explain why this mark was chosen and, if possible, to refute the charge of lack of bona fides in selecting it.

27. As already indicated a further declaration was made by Renzo Rosso on the 9th of July 1996 wherein he again takes up the cudgels on this topic at paragraph 9 in which, were relevant, he swears:-

28. Michael Heery did not reply to this second charge in evidence before the Controller. Furthermore, he has sworn an Affidavit supporting the Special Summons for the purposes of the proceedings before this Court. The charge of lack of bona fides is not dealt with in that Affidavit although he does repeat, therein, that he was a Director of Monaghan Textiles Limited.

29. In my opinion, the use of the word DIESEL in connection with jeans and other clothing is not self explanatory. Counsel for the Opponent suggested the Applicant might have come across the Mark at a trade fair or in some such informal way. Whilst it is of course conceivable that the selection by Monaghan Textiles Limited of this word to use as a mark in connection with precisely the same range of clothing and for the same market in exactly the same way as had been done by the Opponent was a mere coincidence, such of itself would have required an explanation on the part of the Applicant. Once, however, a charge of lack of bona fides against the Applicant was made, on this ground, on behalf of the Opponent there could be no doubt, in my view, that such a charge required refutation. Michael Heery was a Director of Monaghan Textiles Limited and was therefore in a position to afford such a reputation if it existed. He did not do so in his declaration made in response to the Opponents case. Even if it could be suggested that this might have been an oversight (and I would not agree that it could be so suggested) there can be no overlooking the fact that Renzo Rosso repeated the charge in a further subsequent declaration and effectively challenged the Applicants to deny the charge by pointing out that “Mr Heery in his declaration has not attempted to provide any explanation as to how the trademark DIESEL came to be adopted by the Applicant or its alleged predecessor in business.”

30. As indicated Michael Heery has sworn a subsequent Affidavit, but once again, he has not attempted to defend or even allude to this serious allegation.

31. In these circumstances I am not satisfied on the evidence before me that the Applicants proposed user of the mark is bona fides and on this ground I would refuse permission for the proposed registration.

32. The foregoing is, of course, sufficient to determine this Appeal, however, in deference to the comprehensive submissions made on the point by Counsel for all three parties, I am prepared to indicate my views on what is the correct test under Section 19.

33. The plain or literal meaning of these words makes it unlawful to Register a mark which would be disentitled to protection in a Court of law by reason of its being likely to deceive, cause confusion or otherwise. According to this plain meaning once it is established that the use of the mark would be likely to cause confusion or to deceive then it is, ipso facto , disentitled to protection in a Court of Law and registration is prohibited.

34. An alternative interpretation is advanced whereby registration is made unlawful only in cases were in addition to a likelihood of confusion or deception resulting from use, it is also established that the use would be disentitled to protection in a Court of Law on some additional independent basis (involving blame worthiness or the like).

35. This latter interpretation is admittedly not the primary meaning of the text of Section 19. It relies on the policy of the act (at Sections 15 and 20) to permit dual registration of identical or nearly resembling marks in cases of “ honest concurrent use ”. In support of the alternative interpretation of Section 19, it is therefore submitted that the policy of the act is not simply to prohibit registration for use of the mark as likely to deceive or cause confusion but rather to do so only when the party seeking to register is guilty of something blameworthy which would disentitle it to protection in a Court of Law.

36. The cases are strewn with references to the policy of the act (or of its counterpart in other comparable jurisdictions) to protect the public from being confused or deceived either in relation to the character or origin of goods connected with marks.

37. There are also references, however, to a subsidiary policy which protects vested rights of property of traders for example in GEC v. The GE Company Limited (1972:2:AER:507519) Lord Diplock said:-

38. Prior to the GEC case the leading case in the UK was Berlei (UK) -v- Bali Brassier Inc. (1969:2:aer:812). In Berlei Lord Morris referred with approval to the judgment of Evershed J. in Re. Smith Hayden and Co. Limited Application (1945:63:Rpc:97 at page 101) as follows:-

39. In an earlier case Transfermatic trademark (1966:rpc:568) Buckley J. had seemed to suggest that something, more than mere deceit or confusion was required by Section 11. Lord Morris firmly rejected this suggestion.

40. Lord Upjohn in the same case (page 826) also rejected the suggestion in

41. Lord Wilberforce in the same case (831/2) said:-

42. Lord Diplock, who read the leading judgment in the House of Lords in the GEC case, criticised the literal approach and concluded that a purposive construction was the correct one. At p. 517 he said:-

43. He approached the interpretation of Section 11 by a consideration of its historical antecedence in trademark law. This included a consideration of Section 10 of the Trademark Registration Act, 1975 which contained, in part, provisions analogous to those of Section 11 of the 1905 Act (equivalent to out Section 19). In dealing with Section 10 Lord Diplock said:-

44. Subsequently Section 11 of the Trademarks Act, 1938 was enacted in somewhat similar terms.

45. This historical approach to the interpretation of the section (involving emphasis on the equitable discretion of the Court) constitutes the background against which Lord Diplock concluded, inter alia, at page 526:-

46. It will be seen, therefore, that the introduction of the additional requirement of establishing some blame worthy element, arises in the context of an application to expunge the mark from the register. It is of interest, however, to note that in the immediately preceding passage Diplock L.J. dealt with the criteria applicable to original entry as follows:-

47. The foregoing two citations from the judgment of Diplock L.J. comprise two of four propositions expressing the (then) current state of the law under the Act of 1938. It is interesting to note that the concept of blame worthiness is introduced only in the context of an application to expunge a mark from the register: simple confusion (without associated blameworthiness) appears in principle sufficient to prevent initial registration save in the special case of honest concurrent use.

48. The main thrust of the judgment of Diplock L.J. Therefore insofar as it introduces the concept of blameworthiness, is directed at cases for expungement, rather than initial registration. In fact when considering initial registration no question of blameworthiness arises so far as Diplock L.J. is concerned.

49. This emphasis, namely that the focus of the GEC judgment was on subsequent expungement, is enhanced when Diplock L.J. turns to consider whether his views are in conflict with the judgment in the Berlei case. He said:-

50. It is important, I think, to emphasis the last sentence because, at first sight, the Berlei case was also a case dealing with expungement. However, as noted in the foregoing passage the issue dealt with therein was, by agreement, confined to the question relating to confusion at the time it was first registered. Accordingly, the Berlei case, although superficially apparently a case dealing with expungement, is not, on Lord Diplock’s analysis an authority on expungement cases.

51. The policy considerations which drive this interpretation, therefore, apply only to the secondary use of the section; assuming indeed that the section applies to expungement cases at all - itself something that requires a purposive construction of the word ‘register’ as including “permitting the continuance of the entry...on the register” (See per Diplock L.J., GEC case at p.522).

52. The Applicants have relied, in addition, on a number of Australian cases, the chief one being New South Wales Dairy Corporation v. Murray Goulburn Cooperative Company Limited (1990: 24: FCR: 370).

53. As I will indicate shortly, this case produced no clear majority authority favouring the alternative interpretation. The judgment of Mason C.J. (page 384) referred to that of Lord Diplock in the GEC case in the following passage:-

54. I note, at this point, that New South Wales Dairy Corporation was also an expungement case. Whilst, perhaps, the citation from Mason C.J. referred to above may involve language which suggests the principle would apply to initial registration as well as to expungement, the earlier speech of Lord Diplock had made it clear, in my view, that the GEC case was an authority only in the context of expungement.

55. Seven judges tried the New South Wales Dairy Corporation case. Their several decisions were subsequently analysed by Heerey J. in Nettlefold Advertising PTY Limited v. Nettlefold Science PTY Limited (38: IPR: 493) in a careful and comprehensive judgment.

56. The learned judge went on, at that point, to consider what was to be done “where no clear ratio decidendi appears” !

57. Insofar as the UK and Australian authorities relied upon show, it is fair to conclude that, whilst there is judicial disagreement as to whether an additional element of “blameworthiness” is required further to the basic requirement of deception, confusion or otherwise, in cases of expungement, there seems to be no clear authority suggesting that an element of blameworthiness is relevant at all in cases involving initial registration, albeit that some language appearing in the judgments may, at first sight, suggest that this might be the case.

58. So far as Irish authority is concerned, I was referred, first, to Coca-Cola Company v. F. Cade and Sons Limited (1957) IR: 196, and in particular to the observation of Maguire C.J. at page 215 as follows:-

59. I was also referred to the judgment of Kenny J. in P.J. Carroll and Co. v. Philip Morris Inc. (1970: IR: 115) which clearly proceeded upon the basis that confusion simpliciter, so to speak, was sufficient to exclude registration.

60. The judgment of Parke J. in La Chemise Lacoste SA v. The Controller of Patents, Designs and Trademarks (1978: ILRM: 8) provides a succinct description of the test under Section 19 as follows:-

61. Finally, I was referred to the judgment of Murphy J. in Seven-Up v. Bubble Up (1990: ILRM: 204) where the Court held that the mark in question was registerable under Part B. Once again, whilst there are references to the confusion test (the case was primarily concerned with determining whether the use of the mark had demonstrated a capacity to distinguish) there is no suggestion that blameworthiness is a necessary element precedent to exclusion of registration under Section 19.

62. It seems to me, therefore, that insofar as the Irish cases are concerned, they proceed upon the basis that a simple deceit or confusion test is the one contemplated by Section 19. Admittedly, none of these cases have had to deal, head on, with the issue which is squarely raised in the present one.

63. An analogous issue, namely, whether the plain and literal meaning of the words of an Act must be qualified or modified by reference to the policy objectives of that Act, has recently arisen in this country in relation to planning law. In Howard v. Commissioners of Public Works (1994: 1 IR: 101) it was argued that the State was exempted from the application of the Planning Act, not because it was included in Section 4 of the 1963 Act which sets out the list of exempted developments, but because the Act contained at Section 84 a consultative procedure applicable to State authorities so that it was apparent that the policy was to exempt these from the strict requirements of the Act and subject them, instead, to the consultative process.

64. The Supreme Court decided by a three to two majority that the plain words of the statute clearly and unambiguously applied the obligation to obtain planning permission for relevant development to the State and that, notwithstanding other considerations, these words indicated the true intention of the Act.

65. Blayney J. (with whom Finlay C.J. explicitly concurred on this topic) said (page 151):-

66. The plain meaning of the words of Section 19 are that it is unlawful to register a trade mark which is entitled to protection in a Court of law by reason of its being likely to deceive or cause confusion or otherwise. In my view an analysis of the authorities relied upon by the Applicant to support the contention that Section 19 prohibits initial registration of a trade mark only where, in addition to its use being likely to confuse or deceive, there is an additional element of blameworthiness on the part of the Applicant, do not in fact disclose any clear or settled principle to that effect. Indeed, it seems to me that such observations or dicta as do refer to the introduction of the concept of blameworthiness, apply only in the case of subsequent expungement applications and even in this context there does not appear to be anything like a settled or clear line of authority.

67. The Irish cases appear to proceed on the basis that simple confusion or deception is sufficient to exclude registration under Section 19.

68. Finally, the clear and unambiguous meaning of the words of Section 19 itself, simply exclude registration where it is established that use of the mark would involve confusion, deception or otherwise, thereby disentitling such use to protection in a Court of law.

69. In the present case, I am in agreement with the Controller that it is obvious that the use of the same word on the same type of garments for distribution into the same market must raise the likelihood that a substantial number of persons will be confused, at least in the sense that they will be left in doubt as to whether these are the markets of the Applicant or the opponent. In these circumstances, in my view he was correct in refusing to register the mark.

70. I would therefore disallow this appeal.