Dior wins the HIGHER ground

In Perfume Christian Dior v Sitarakm (Red Case 58/46), the Central Intellectual Property and International Trade Court has overturned a Board of Trademarks decision rejecting the registration of the mark HIGHER.

Perfume Christian Dior had applied to register the mark HIGHER in Class 3 of the Nice Classification for, among other things, perfumery products and skin lotions. The registrar rejected the application on the grounds that the mark was identical or similar, in particular in pronunciation, to the mark HI-ER (in Latin script and Thai characters) registered for skin lotions. Dior filed an appeal with the Board of Trademarks, which affirmed the registrar's decision. Dior then filed a civil action with the Central Intellectual Property and International Trade Court.

In the complaint, Dior (i) argued that its mark was registered in various countries, and (ii) submitted substantial evidence of use in over 50 countries, including Thailand since 2000. Dior also claimed that its mark HIGHER was clearly different in appearance from the HI-ER mark, which was registered in capital letters with a hyphen between the two syllables, followed by Thai characters. In contrast, the mark that Dior sought to register:

• only had one capital letter (the first 'h');
  
  
• was in Latin script only;
  
  
• was made up of a single word; and
  
  
• had a meaning.

The court upheld these arguments, finding that the marks were different despite the similarities in pronunciation. The court reasoned that (i) the essential component of the word of each mark was different in appearance, and (ii) the pronunciation of a mark is not in itself within the meaning of 'trademark' as defined by Section 4 of the Trademark Act. Further, the court ruled that there will not be any public confusion or deception as to the proprietor or origin of the goods under Section 13(1) and (2) if the marks are different in appearance. However, the court added that the pronunciation of a mark must still be considered, when the mark is identical or similar in appearance to a registered trademark.

Thus, it appears that similarity in pronunciation between two marks will only become relevant when and if the two marks at issue are substantially similar in appearance.

Nuttaphol Arammuang and Srila Thongklang, Tilleke & Gibbins International Ltd, Bangkok