Diesel SPA v The Controller of Patents, Design & Trademarks & ano [2016] IEHC 415 (09 June 2016)

Diesel SPA v The Controller of Patents, Design & Trademarks & ano [2016] IEHC 415 (09 June 2016)

The High Court held that the Hunt-Wesson criteria, which provide a more flexible approach than the Murphy principles, are appropriate for appeals from the Controller in trademark matters. The Court found that while all evidence sought could have been filed earlier and no explanation for delay was provided, the...

Source-derived case information.

Citation
[2016] IEHC 415
Parties
Plaintiff: Diesel S.P.A.; First Defendant: The Controller of Patents, Designs and Trademarks; Second Defendant: Montex Holdings Ltd.
Jurisdiction
Ireland
Judgment Date
09 June 2016
Procedural Posture
Trademark Registration Appeal / Application for Leave to Adduce Further Evidence on Appeal
Outcome
Application granted in part
Legal Topics
Admission of Fresh Evidence, Trademark Registration, Appeal Procedure, Evidentiary Standards
Intellectual Property Trademark Law Admission of Fresh Evidence Trademark Registration Appeal Procedure Evidentiary Standards

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Parties

Diesel S.P.A.

Plaintiff

The Controller of Patents, Designs and Trademarks

First Defendant

Montex Holdings Ltd.

Second Defendant

Procedural Posture

Trademark Registration Appeal / Application for Leave to Adduce Further Evidence on Appeal

Legal Issues

  1. 1 What principles govern the admission of fresh evidence in a trademark appeal from the Controller to the High Court?
  2. 2 Should the plaintiff be permitted to adduce further evidence to address deficiencies identified by the Controller?

Ratio Decidendi

The High Court held that the Hunt-Wesson criteria, which provide a more flexible approach than the Murphy principles, are appropriate for appeals from the Controller in trademark matters. The Court found that while all evidence sought could have been filed earlier and no explanation for delay was provided, the nature of the dispute and the potential significance of the evidence justified admission of additional invoices, advertisements, circulation figures, certain letters, and public record documents. Affidavits based on hearsay or recollection (Lesurum, Shanahan) were excluded due to prejudice and unreliability, but the affidavit of Mr. Cutting was admitted as it reflected trading...

Court Disposition

Application granted in part

Orders

  • Leave granted to admit additional invoices, advertisements, circulation figures, letters, and public record documents as evidence.
  • Leave refused for affidavits of Mr. Lesurum and Mr. Shanahan.