Following a long legal dispute that spanned 30 years, the High Court has concluded that an Irish company in Monaghan, Montex Holdings ( Montex)  copied the Trade Mark DIESEL owned by the Italian clothing company Diesel SPA ( Diesel ).

The dispute concerned who in fact owned the Trade Mark DIESEL. Montex commenced using the Trade Mark DIESEL on jeans in Ireland in 1979 and applied to register the Trade Mark DIESEL in September 1992. Diesel had been selling clothing throughout many of the EU countries since 1978 and launched in Ireland in 1982 selling its clothing under the DIESEL name. Montex adopted the brand DIESEL in late 1979 or early 1980.

In 1992 Montex applied to register the Trade Mark DIESEL, Diesel sought to secure registration two years later in 1994. Each of the companies opposed each other’s trade mark applications and so the battle began.

The Intellectual Property Office of Ireland (IPOI) ( or The Patent Office as it was called at that time ) upheld Diesel’s objection to the Montex trade mark application. Montex appealed twice and both times was refused registration.

In 2012, the IPOI upheld Montex’s opposition to Diesel’s trade mark application and this decision was, not surprisingly, appealed by Diesel.

Montex claimed that the name had been devised independently of Diesel and that it had acquired the trade mark from the company Monaghan Textiles Ltd.

Mr Patrick McKenna, a Director of Montex, previously employed by Monaghan Textiles Ltd, stated in his evidence that the use of DIESEL as a trade mark for jeans had been inspired by a large red sign for diesel on show at a petrol station located next to their premises, and had been suggested by a colleague.  The judge, Mr Justice Cregan, was unconvinced.

Montex only demonstrated evidence of use of the Trade Mark DIESEL since 1979 when Diesel had already put its DIESEL jeans on the market in Italy and 3 other EU countries.

The judge was convinced that some wrong doing had taken place and stated that “in my view, the copying of a mark is an act of dishonesty. Dishonesty is never a legitimate business practice”.

Your trade marks are one of your most powerful business assets and should be protected, maintained and policed. Equally, if you notice a third party using or you are advised that a third party is attempting to register your trade mark at the IPOI, take action without delay.

Carla MacLachlan, Director and Trade Mark Attorney