Dishonest Use of a Trade Mark – Don’t Add Fuel (Diesel or otherwise) to the Fire

Some of my earliest interests in brands came from those weird mid 1990s knock offs of well known fashion brands – Jonny Brewbacker (Tommy Hilfiger), Abidas (Adidas)- that weren’t quite counterfeits but sailed very close to the wind in terms of a dishonest use of a trade mark or at least passing off. However these products, from my memory, were only ever sold by so-called ‘casual traders’ at street markets such as the Coal Quay in Cork (sadly no longer a feature of the city…) and Dublin’s Moore Street.

However a recent judgement of the Irish High Court, issued by Mr Justice Brian Cregan, has said that a large and long standing corporate entity had “since 1979 “dishonestly and wrongfully” copied the DIESEL trademark of the popular Italian clothing brand which is owned by Italian-based Diesel SPA.

The Irish firm, Montex Holdings, based in Monaghan, began making jeans in Ireland with the name “Diesel” on them since late 1979/early 1980, the judge said. However the Italian company has been selling clothing throughout many EU countries since 1978 and in Ireland since 1982 under its “Diesel” brand.

There has been a decades long trade mark saga between the two companies in the Irish courts surrounding registration of DIESEL as an Irish trade mark since 1992, however in the interests of keeping this blog to 400 words, it suffices to say that ultimately the High Court has found the Italian company is entitled to register, and is therefore the rightful owner, of the DIESEL brand for jeans and other clothing in Ireland.

The evidence of a director of Montex, Patrick McKenna, who said he has worked with Montex since 1963 and that the factory used to be next to a petrol station that had a big red ‘Diesel’ sign on display held no truck with the judge who said Mr McKenna’s assertion that he has never looked at Diesel SPA’s “Diesel” logo, “strains credulity”. It was clear that Montex only begun to use the DIESEL mark on clothing in Ireland from 1979 when they were well aware that the Italian company was already using it in Italy and 3 other European countries since 1978.

Rather than believe the use was an “amazing coincidence”, the judge said it was more reasonable to conclude Monaghan Textiles saw Diesel SPA’s brand name and proceeded to copy it.

“In my view, the copying of a mark is an act of dishonesty. Dishonesty is never a legitimate business practice,” the judge said.

Had it chosen the word “Gasoline” this 30-year battle would not have occurred, but instead Montex used “Diesel” to “effectively ‘piggyback’” on the Italian firm’s products.

If you are concerned that a competitor or another person is dishonestly using your brand name or dishonestly using a brand name similar to yours in Ireland or elsewhere, get in touch with Briffa. Our expert team can assess the nature of the dishonest use of a trade mark and advise on how to proceed.