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  • Writer's pictureRosie Burbidge

Who owns the Diesel brand in Ireland?

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The Italian fashion company Diesel has won a case against Montex Holdings (Diesel Ireland) before the High Court of Ireland. This is the latest instalment in the long-running litigation between the parties.


This dispute dates back to 1992 when Diesel Ireland applied to register DIESEL as a trade mark in Ireland. Then, in 1994, Diesel Italy applied to register the DIESEL word and device. It also opposed Diesel Ireland’s application.


Diesel Ireland’s application was considered first and the Diesel Italy application was put on hold. In 1998, the opposition was upheld – a decision that was confirmed by the Irish High Court and Irish Supreme Court (in 2001).


Meanwhile, Diesel Ireland had opposed Diesel Italy’s application. This opposition was eventually upheld in April 2013, and Diesel Italy appealed it to the High Court.


The judge, Mr Justice Cregan, said the case essentially boiled down to the question: who is the owner of the Diesel trade mark? Diesel Italy claimed it is the owner because it created the name and applied it to jeans. It said Diesel Ireland had copied the mark. Diesel Ireland claimed it came up with the name independently and was entitled to be regarded as the owner as it was the first user in Ireland.


He also said the issue of who is the owner should be decided under principles of common law.


Independent use?

Tracing the extensive history of the brand and the chain of title in Ireland, Mr Justice Cregan concluded that Diesel Ireland could only demonstrate use of the mark from 1979 onwards – the year after Diesel Italy’s first use of the mark in Europe. Moreover, Diesel Ireland had not put forward any admissible evidence about how it adopted the Diesel mark in Ireland in 1979 and the evidence of independent adoption was not credible.


The judge described Diesel Ireland’s argument that it was “an amazing coincidence” that it started using the Diesel name after Diesel Italy as “so improbable as to be extremely unlikely”:


“It is clear that Diesel Italy came up with the mark first; the idea that Diesel Ireland independently and in a bona fide manner came up with the very same unusual name and mark one year later for the very same product (i.e. jeans) is completely fanciful. There was no coincidence. It improperly, and unlawfully copied the Diesel Italy's mark and it has been copying it ever since 1979.”

Diesel Ireland’s use of the mark amounted to copying and it acted “dishonestly, and not in a bona fide manner”.


Who is the first user of Diesel?

Diesel Ireland further argued that it owned the Diesel mark because it was the first company to use the mark in Ireland between 1979 and 1982.


But the judge said: “You cannot act dishonestly and then acquire a proprietary right in anything – from a house to a trademark.” He found that Diesel Ireland was never honestly or lawfully the first user in Ireland, stating:


“Diesel Ireland could have used the mark ‘Gasoline’ and this thirty 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.”

He described the behaviour as “manifestly dishonest and wrongful” and said Diesel Ireland is not and never has been the bona fide or lawful proprietor of the mark while Diesel Italy, as a matter of fact and law, was the first bona fide and lawful user of the Diesel mark in Ireland.


What does this mean?

The consequence of the ruling is that Diesel Italy is entitled to an injunction to restrain the unlawful use by Diesel Ireland of the DIESEL mark and Diesel Italy is entitled to register the DIESEL mark in Ireland.


This is a comprehensive and decisive ruling, which will be welcomed by Diesel Italy and is likely good news for other famous brand owners who face similar challenges. However, given the long history of proceedings between these parties a further appeal cannot be ruled out!


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


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