Can New Evidence Be Admitted In A Trade Mark Appeal By Way of Re-hearing?

A Report on Diesel S.P.A. v The Controller of Patents, Designs and Trade Marks and Montex Holdings Ltd – High Court 2013/641 S.P.  [2016] IEHC 415

This decision is the latest round in a dispute that has been running since 1992 in Ireland between the Italian company Diesel S.P.A. and Montex Holdings Limited (“Montex”) concerning prior rights to the DIESEL trade mark in Ireland. While this is a procedural decision, from a trade mark law perspective it is interesting because it helps clarify the special circumstances in which further evidence may be adduced in the context of an appeal by way of re-hearing to the Irish High Court from a decision of the Controller of Trade Marks.  

Essentially the Court held that the test for special leave to adduce further evidence is less stringent in the case of an appeal from a decision of the Controller to the High Court than in the case of an appeal from a decision of the High Court itself. The basis for this decision was that an appeal from the Controller is by way of full re-hearing of the facts and law of the case (while an appeal from a decision of the High Court is based on an error of law) and that the wider public interest in maintaining and protecting the validity of the trade mark register and in not admitting invalid marks to the register should be taken into account in deciding whether additional evidence may be adduced or not.

Montex had originally made an application for DIESEL as a trade mark in Ireland in 1992. This had been opposed by Diesel S.P.A. and after a series of decisions on appeal to the Superior Courts the opposition was upheld on the basis that there was a likelihood of confusion with Diesel S.P.A.’s mark. This was all in the context of an earlier factual finding by the High Court that there was sufficient evidence of usage by both parties prior to the date of Montex’s application to support the prima facie entitlement of Montex to make its application and of Diesel S.P.A. to oppose this application. Diesel S.P.A. then brought forward its own trade mark application for DIESEL that it had originally made in 1994. Montex in turn opposed these applications and the oppositions were upheld by the Controller who criticised Diesel S.P.A for not having provided sufficient evidence of sales or use of its marks in advertisements or magazines in the relevant period. This application for special leave to adduce further evidence was made by Diesel S.P.A in an effort to address the deficiencies identified by the Controller.

Prior to this decision there was no Irish authority concerning the principles governing applications to adduce fresh evidence in appeals from decisions of the Controller of Trade Marks. The relevant statutory provisions and Court rules provide for an appeal by way of re-hearing to the High Court based exclusively on the evidence already heard by the Controller and expressly state that further evidence can only be adduced with special leave of the Court. The principles for adducing further evidence in an appeal from a decision of the High Court are however well established requiring that the relevant evidence must have been in existence at the time of trial, but must not have been reasonably available and must be credible evidence that is of  importance to the outcome of the case.

The Controller submitted to the Court that these principles should also govern the position in the case of appeals from decisions of the Controller as otherwise there would be a risk that parties might not adduce all of their evidence before the Controller if they think that they could do so on appeal at a full rehearing in the High Court. In refusing to adopt this approach, Mr Justice Binchy noted that there is a clear difference between an appeal from a High Court decision and an appeal from a decision of the Controller by way of full re-hearing. In doing so he affirmed the approach of Mr Justice Laddie in Hunt Wesson Inc’s Trademark Application [1996] RPC 233 in applying the following factors and considerations:

1. Whether the evidence could have been filed earlier and if so then how much earlier;
2. If it could have been, what explanation for the late filing had been offered to explain the delay;
3. The nature of the mark;
4. The nature of the objections to it;
5. The potential significance of the new evidence;
6. Whether or not the other side would be significantly prejudiced by the admission of the evidence in a way which could not be compensated e.g. by an order for costs;
7. The desirability of avoiding a multiplicity of proceedings;
8. The public interest in not admitting on the register invalid trade marks.

In adopting a less rigorous approach for the admission of new evidence, the Court focussed not only on the fact the appeal was by way of re-hearing but on the greater public interest in ensuring that the register is correct and clean and that invalid marks are not admitted to the Register. The Court downplayed the risk of parties withholding evidence and seeking to adduce it later on appeal on the basis that this was not how litigation was managed in practice there being no incentive for parties to adopt such an approach.   

Diesel S.P.A. had sought to adduce additional invoices, advertisements, magazine circulation figures, sales evidence and certain publically available documents and letters all that would assist in demonstrating its usage prior to the date of trade mark application. In applying these factors the Court firstly noted that there was no explanation as to why this information was not available, or as to why it had not been advanced at the time of making the original application. It went on to acknowledge that the application was clearly a reaction to the Controller’s comments in its decision concerning the lack of evidence put forward by Diesel S.P.A..

In spite of this adverse finding, the Court went on to focus on factors (iv), (v) and (iv) and underlined the relevance and import of the new evidence. It found that Montex would not be significantly prejudiced by admission of the advertisements, circulation information, invoices or sales evidence, on the basis that this was factual information not requiring any reply and that it really amounted to additional information of the kind already adduced in the proceedings. Accordingly, the Court admitted  this evidence but refused certain affidavit evidence on the grounds that it was either based on hearsay, or was related to recollections of the marketplace more than 20 years ago which would now be very difficult for Montex to rebut satisfactorily and therefore could unduly prejudice Montex’s interests.

Overall the decision underlines the possibility that new evidence may be admitted in the circumstances of a trade mark appeal by way of re-hearing where the evidence is potentially significant and its admission at a late stage will not unduly prejudice the other party’s interests. Although this may seem a banale result to many civil law practitioners, for those in Irish practice it provides a welcome confirmation of the applicable principles in circumstances that many of us might have otherwise thought that on appeal we were a long way up justice’s creek without an evidential paddle.      

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