Diesel denim dispute decided after 30 years
Italian brand wins order banning Irish rival selling jeans under same name
‘Copying is a mark of dishonesty ‘Flagrant violation of rights’
THE Italian manufacturer of Diesel jeans has won a court order banning its Irish rival from selling jeans under the same name.
The High Court ruling follows a fiercely fought and long-running legal battle between the two companies, which goes back over 30 years to 1992.
In a judgment published yesterday, Judge Brian Cregan granted an injunction restraining the ‘unlawful’ use of the mark ‘Diesel’ by Diesel Ireland. He said: ‘In my view, the copying of a mark is an act of dishonesty. Dishonesty is never a legitimate business practice. Diesel Ireland could have used the mark “Gasoline” and this 30-year battle need never have occurred. But it used the name “Diesel” to effectively “piggyback” on Diesel Italy’s marketing and advertising of its products and to increase its own sales.’
Giving the background to the case, he said that Diesel SPA was a company incorporated in Italy, which owns the trademark ‘Diesel’ throughout many countries in the EU, and had applied to register ‘Diesel’ on the Irish register of trademarks. It manufactures and sells clothing – particularly jeans – under the brand name ‘Diesel’.
It first began to sell its goods under this brand name in Italy and in several other European countries in 1978, moving into Ireland in 1982.
The judge said he would refer to the company as ‘Diesel Italy’.
Montex Holdings Ltd, an Irish company with a registered office in Co. Monaghan, began to manufacture jeans in Ireland with the name Diesel in late 1979. The judge referred to this company as ‘Diesel Ireland’.
The judge said there was a complex history of conflict between the two companies, dating back to 1992, when Diesel Ireland applied to the Controller of Patents, Designs and Trademarks to register ‘Diesel’ as a trademark.
Just under two years later, Diesel Italy applied to register the trademark ‘Diesel’ in Ireland.
Both opposed the other’s registration on the grounds that it was likely to lead to confusion, and constituted an attempt to dishonestly take its trademark.
In 1998, the Controller rejected Diesel Ireland’s objection, supporting Diesel Italy. This was then upheld by the High Court, after Diesel Ireland appealed.
The High Court said the Diesel Ireland mark was likely to deceive and cause confusion and did not allow it to be registered. Diesel Ireland then turned to the Supreme Court, but lost again in 2001. Further litigation continued, concerning Diesel Italy’s own registration, and in 2013 the Controller ruled that it would not allow that trademark to be registered either, stating that Diesel Italy was not the owner of the Diesel trademark and that there would be confusion in the market.
It is that decision which was then appealed to the High Court by Diesel Italy, resulting in the ruling published on the Courts Service website this week. Judge Cregan said the fundamental issue to be considered was whether Diesel Ireland or Diesel Italy owned the Diesel trademark.
Diesel Italy claimed it was the owner because it designed the mark, thought up the name Diesel and applied the name to its jeans and related products.
It argued that Diesel Ireland had, improperly and dishonestly, and with a lack of good faith, copied its mark and was using that mark on its jeans in ‘flagrant violation of Diesel Italy’s rights’ as owner of the mark. Diesel Ireland claimed that it was the proprietor of the mark Diesel because it came up with the name independently of Diesel Italy and because it was the first user in Ireland.
Judge Cregan concluded: ‘I am of the view that the fact that Diesel Italy applied to register its trademark in Italy in 1977 and launched its products throughout Europe in 1978, together with the lack of any plausible explanation by Diesel Ireland as to how it came to adopt the name “Diesel”, leads inevitably to the conclusion that Diesel Ireland is seeking to dishonestly copy the mark “Diesel” in order to “piggyback on”, and to expropriate, the goodwill generated by Diesel Italy’s marketing and sale of its jeans.’
He therefore ruled Diesel Italy owned the brand name Diesel and ordered that Diesel Ireland must not use the trademark.
He said he would hear from the parties again on the issue of what steps would be taken next and who would pay the legal costs.