Montex Holdings Ltd. v. Controller of Patents, Designs and Trademarks [2001] IESC 36; [2002] 1 ILRM 208 (5 April 2001)

Montex Holdings Ltd. v. Controller of Patents, Designs and Trademarks [2001] IESC 36; [2002] 1 ILRM 208 (5 April 2001)

On an application for original registration, proven likelihood of confusion under section 19 of the Trade Marks Act 1963 is sufficient to mandate refusal of registration; there is no requirement to establish blameworthy conduct such as passing off. The High Court and Controller correctly refused registration of the DIESEL mark to the plaintiff.

Citation
[2002] 1 ILRM 208
Parties
Plaintiff/appellant: Diesel Unlimited Limited; First Named Defendant/respondent: Controller of Patents, Designs and Trade Marks; Second Named Defendant/opponent: Diesel S.p.A.
Jurisdiction
Ireland
Judgment Date
05 April 2001
Procedural Posture
Trade Mark Registration Appeal / Supreme Court Appeal From High Court Decision Affirming Refusal of Registration
Outcome
Appeal dismissed
Legal Topics
Likelihood of Confusion, Trade Mark Registration, Section 19 Trade Marks Act 1963, Requirement of Blameworthiness, Honest Concurrent User, Expungement Vs. Registration
Intellectual Property Trade Marks Likelihood of Confusion Trade Mark Registration Section 19 Trade Marks Act 1963 Requirement of Blameworthiness Honest Concurrent User Expungement Vs. Registration

Case Brief

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Parties

Diesel Unlimited Limited

Plaintiff/appellant

Controller of Patents, Designs and Trade Marks

First Named Defendant/respondent

Diesel S.p.A.

Second Named Defendant/opponent

Procedural Posture

Trade Mark Registration Appeal / Supreme Court Appeal From High Court Decision Affirming Refusal of Registration

Legal Issues

  1. 1 Whether likelihood of confusion alone is sufficient to refuse trade mark registration under section 19 of the Trade Marks Act 1963 or if blameworthy conduct is also required
  2. 2 Whether the High Court and Controller correctly applied the law in refusing registration of the DIESEL mark

Ratio Decidendi

On an application for original registration, proven likelihood of confusion under section 19 of the Trade Marks Act 1963 is sufficient to mandate refusal of registration; there is no requirement to establish blameworthy conduct such as passing off. The High Court and Controller correctly refused registration of the DIESEL mark to the plaintiff.

Court Disposition

Appeal dismissed

Orders

  • Refusal of registration of the DIESEL trade mark by the Controller is affirmed.