Supporting Documents:
 33-19 Resp Notice.web version.docx 33-2019 Diesel SPA -v- The Controller of Patents, Designs and Trademarks & Montex Holdings Ltd AFL Web.pdf
 33-2019 Diesel SPA -v- The Controller of Patents, Designs and Trademarks & Montex Holdings Ltd.Resp Notice.web.pdf
THE SUPREME COURT
DETERMINATION
IN THE MATTER OF THE TRADE MARKS ACT 1963 AND IN THE MATTER OF THE TRADE MARKS ACT 1996 AND IN THE MATTER OF APPLICATION NUMBERS 177240 AND 177245
DATED 11 JANUARY 1994 PURSUANT TO THE TRADE MARKS ACT 1963 BY DIESEL SPA FOR REGISTRATION OF DIESEL AND DIESEL (DEVICE) AS TRADE MARKS IN CLASS 25 OF THE REGISTER OF TRADE MARKS
BETWEEN
DIESEL SPA AND
THE CONTROLLER OF PATENTS DESIGNS AND TRADEMARKS
AND
MONTEX HOLDINGS LIMITED
SECOND DEFENDANT
APPLICATION FOR LEAVE TO APPEAL TO WHICH ARTICLE 34.5.3° OF THE CONSTITUTION APPLIES
RESULT: The Court grants leave to the Plaintiff to appeal to this Court from the Court of Appeal
REASONS GIVEN:
ORDER SOUGHT TO BE APPEALED
| COURT: Court of Appeal |
DATE OF JUDGMENT OR RULING: 2nd October, 2018 |
DATE OF ORDER: 3rd October, 2018 |
DATE OF PERFECTION OF ORDER: 5th February, 2019 |
THE APPLICATION FOR LEAVE TO APPEAL WAS MADE ON 25th February, 2019 AND WAS IN TIME. |
General Considerations
1. The jurisdiction of the Supreme Court to hear appeals is set out in the Constitution. As is clear from the terms of Article 34.5.3 thereof and the many determinations made by this Court since the enactment of the 33rd Amendment, it is necessary, in order for this Court to grant leave to appeal from a decision of the Court of Appeal, that it be established by the applicant that the decision sought to be appealed involves a matter of general public importance, or that it is otherwise necessary in the interests of justice that there be an appeal to this Court.
2. The general principles applied by this Court in determining whether to grant or refuse leave to appeal having regard to the criteria incorporated into the Constitution as a result of the 33rd Amendment have now been considered in a large number of determinations and are fully addressed in both the determination issued by a panel consisting of all of the members of this Court in B.S. v. Director of Public Prosecutions [2017] IESC DET 134 and in an unanimous judgment of a full Court delivered by O’Donnell J. in Price Waterhouse Coopers (a firm) v. Quinn Insurance Limited (under administration) [2017] IESC 73. The additional criteria required to be met in order that a so called “leapfrog appeal” direct from the High Court to this Court can be permitted were addressed by a full panel of the Court in Wansboro v. Director of Public Prosecutions [2017] IESC DET 115. It follows that it is unnecessary to revisit the new constitutional architecture for the purposes of this determination.
3. It should be noted that any ruling in a determination is a decision particular to that application and is final and conclusive only as far as the parties are concerned. The issue calling for the Court’s consideration is whether the facts and legal issues meet the constitutional criteria as above identified. It will not, save in the rarest of circumstances, be appropriate to rely on a refusal of leave as having a precedential value relative to the substantive issues, if and when such issues should further arise in a different case. Where leave is granted on any issue, that matter will be disposed of in due course in the substantive decision of the Court.
4. The application for leave filed, and the respondent’s notice thereto, are published along with this determination (subject only to any redaction required by law) and it is therefore unnecessary to set out the position of the parties in detail.
Application
5. The plaintiff in these proceedings (“Diesel”) seeks leave to appeal against the judgment and order of the Court of Appeal dated respectively the 2nd October, 2018 and the 3rd October, 2018. By its order, the Court of Appeal reversed the decision of the High Court (Binchy J.) which had granted leave to Diesel to introduce new evidence at the hearing of its appeal in the High Court against the decision of the first named defendant, the Controller of Patents, Designs and Trade Marks, (“the Controller”) pursuant to s. 57 of the Trade Marks Act 1963.
6. The respondents both oppose the grant of leave.
Background
7. Diesel is an Italian company which manufactures and sells clothing under the brand name, Diesel. The second named defendant to the proceedings, Montex Holdings Limited (“Montex”) is an Irish company involved in the fashion industry which also used the Diesel brand name
8. In 1994 Diesel applied to obtain a trademark in respect of the use of the word DIESEL. That application was opposed by Montex. The hearing ultimately took place in May, 2012 with the Controller’s decision being delivered in September, 2013. In refusing Diesel’s application, the Controller was highly critical of its failure to provide more evidence than it had done in relation to the sale of its goods in Ireland during the relevant period.
9. Diesel appealed the decision of the Controller to the High Court under s. 57 of the 1963 Act. Relevant in this regard is s. 25(7) of the 1963 Act which provides that appeals under s. 57 “shall be heard” on the materials that were before the Controller except by leave of the Court. Relevant also is s. 57(2) which provides that on the hearing of the appeal “the Court shall have and exercise the same discretionary powers as under the Act are conferred on the Controller”. Underscoring the High Court’s discretion on the appeal and its obligation to determine that appeal on the materials that were before the Controller, otherwise than with leave of the Court, is Ord. 94, r. 48 of the Rules of the Superior Courts which provides, inter alia, that:
“Every such appeal to the court shall be by way of rehearing; and, subject to the provisions of the Act, every appeal under s. 25 of the Trade Marks Act, 1963, shall be heard on the materials stated by the Controller to have been used by him in arriving at his decision, and every other appeal shall be heard on the same evidence as that used at the hearing before the Controller. No further evidence shall be given nor further material brought forward for the consideration of the court on the hearing of any appeal without the special leave of the court granted on an application made at or before the hearing”.
10. In light of the criticisms made by the Controller in respect of the evidence that had been submitted by Diesel in support of its application, Diesel applied to the High Court to introduce a substantive body of new evidence on the appeal. It argued that the principles to be applied on that application were those identified in the decision of the English High Court in Hunt-Wesson Inc.’s Trade Mark Applications [1996] RPC 233. The factors to be considered by the Court as identified by Laddie J. provide for a more liberal regime than would pertain if the principles identified by Finlay C.J. in Murphy v. Minister for Defence [1991] 2 I.R. 161 were to be applied. Diesel also relied upon the fact that in Unilever v. Controller of Patents & Sunrider Corporation [2005] IEHC 426, Laffoy J. had, with the agreement of the parties, applied the principles identified in Hunt-Wesson when dealing with an application by Unilever to admit new evidence on an appeal from a decision of the Controller. That said, Laffoy J. nonetheless refused to admit the new evidence on the basis that the appellant was seeking to mend its hand having seen the decision of the Controller and she concluded that was not what the legislature had intended in enacting s. 26(9) which permits a party bring forward further material for the consideration of the Court if special leave be granted.
11. In the High Court, the Controller argued for the application of the Murphy principles. However, that was not an approach favoured by Binchy J.. He considered a less rigorous approach should apply. In so doing, he concluded that there was a clear difference to be drawn between an appeal to the High Court from the Controller, which was a full rehearing, and an appeal to the Supreme Court from the High Court, with the result that the Murphy principles did not apply. Accordingly, he admitted most of the new evidence proposed even though satisfied that (i) the application was in direct response to the decision of the Controller and was an effort to address the deficiencies which he had identified, (ii) that the evidence was such that it could have been obtained at the time the original application was made and (iii) no explanation had been forthcoming as to why it had not been made available to the Controller.
12. On appeal, the Court of Appeal decided that the test articulated in Murphy was the correct test rather than that outlined in Hunt-Wesson. It concluded that the appeal envisaged under the 1963 Act, as per ss. 25, 26 and 57, was clearly one intended to be based on the materials which were before the Controller in the first instance unless new evidence was admitted with leave of the Court itself. Thus, the scope of the appeal was, the Court concluded, in many respects indistinguishable from that which prevailed in respect of an appeal from the High Court to the Supreme Court pre October 2014.
13. Relevant to this application is the fact that in the course of his judgment, Hogan J. observed that no Irish court had definitively pronounced on the Hunt-Wesson test in the context of a Trade Marks Act appeal. Furthermore, whilst he noted that the principles in Hunt-Wesson had been applied by Laffoy J. by agreement in Unilever he also recorded her conclusion that it had not been the intention of the legislature that a party be permitted to introduce new evidence to augment their case on appeal.
14. The Court of Appeal concluded that the Murphy principles were to be applied on an application to admit new evidence in an appeal under s. 57 of the 1963 Act. This was because, to all intents and purposes, Hogan J. considered it would be artificial for the Court to treat such an appeal as different from appeals from the High Court to the Supreme Court (prior to October, 2014). Thus, the judgment of the High Court was one which flew in the face of the Murphy principles.
15. In its application for leave to appeal Diesel contends that there are matters of general public importance that justify an appeal to the Supreme Court. It also maintains that the appeal should be permitted on the basis that an appeal is necessary in the interests of justice.
Decision
16. In order to conclude that the constitutional threshold is met the Court must first be satisfied that the point or points which the appellant wishes to raise are stateable and second that they are of general public importance i.e. that they have the capacity to affect or govern cases other than that under consideration.
17. It is claimed that Court of Appeal’s conclusion that the scope of an appeal from the Controller to the High Court under s. 57 of the 1963 Act is in substance similar to an appeal from the High Court to the Court of Appeal was reached per incuriam. This is stated to have occurred because the Court overlooked the decision of the then Chief Justice in Philadelphia Storage Battery Company v. Controller of Industrial and Commercial Property [1935] I.R. 575 wherein he stated that on an appeal similar to that under consideration here the Court was free to form “its own opinion untrammelled by” the views of the Controller, a judgment later followed in cases such as Re Hamilton Cosco Inc. [1966] I.R. 266. It was the failure of the Court of Appeal to have regard to this decision when considering the scope of the appeal that had led it to conclude, per incuriam, that it was bound to apply the principles outlined in Murphy when considering the application to admit new evidence.
18. It is undoubtedly the case, as Hogan J. observed in the course of his judgment, that the appeal from the decision of Binchy J. was the first time that, at an appellate level, the Court had been asked to determine the test which should govern the admission of new evidence on an appeal to the High Court further to s. 57 of the 1963 Act. Was that application one that was governed by the principles identified in Murphy or, was the court entitled to apply the somewhat more lenient regime identified by Laddie J. in Hunt-Wesson?
19. Having considered the documentation lodged on the present application, the Court is satisfied that it is stateable for Diesel to maintain that the Court of Appeal incorrectly categorised the scope of the appeal to the High Court under s. 57 as equivalent to an appeal (pre October 2014) from the High Court to the Supreme Court and thus fell into error in the test it applied to Diesel’s application made to admit new evidence. Relevant also to the statability of the appeal concerning the test to be applied on such an application is not only the decision in Hunt-Wesson but the fact that Laffoy J. in Unilever was prepared to apply that test even if she did so by agreement between the parties rather than due to any intended departure from the Murphy principles.
20. The court is also satisfied that the issue raised by Diesel concerning the principles or test to be applied on an application to admit new evidence in a Trade Mark appeal is one of general public importance and that such clarification as may be forthcoming from this Court following the hearing of the appeal will not only impact on the rights and entitlements of the parties hereto but will inure for the benefit of all litigants who may see the need to apply to admit new evidence on their appeal against any future decision of the Controller. That being so, the Court considers the constitutional threshold for the appeal to be met in relation to the matters raised for consideration at grounds 1-4 inclusive of the proposed Notice of Appeal.
21. The Court is also satisfied that the interests of justice render it necessary that the Court also grant leave to appeal in respect of the remaining proposed grounds of appeal. Leave to appeal will accordingly be granted.
And it is hereby so ordered accordingly.
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