HIRA TAIL V/S HIRA

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by Naseem Sheikh

BRIEF OF THE CASE 

The subject matter of this article is the trademark application for the mark HIRA-TAIL, Application No. 5988872 in Class 05. The applicant is Dinesh Kumar Jain, trading as Shree Mahavir Relief Society, with the goods specified as an Ideal Ayurvedic Medicine. The mark filed is a device mark, which includes a comprehensive label. This label features the prominent words “Special HIRA-TAIL AN IDEAL AYURVEDIC MEDICINE SHREE MAHAVIR RELIEF SOCIETY,” along with an artistic visual element depicting a human figure holding a knee in a posture suggesting pain. This design mark is intended to protect the visual getup and the complete textual content as a whole, specifically for the applicant’s Ayurvedic preparation.

FACTS

The facts center on a trademark opposition proceeding filed against the registration of HIRA-TAIL. The Applicant, Dinesh Kumar Jain, sought registration for the device mark under Class 05. This application was opposed by M/S HIRA ENTERPRISES (the Opponent), who claimed to be the prior adopter, user, and registered proprietor of the word mark HIRA and its various formative marks, also covering similar goods in Class 05. The core of the dispute was the alleged deceptive similarity between the Opponent’s established mark HIRA and the Applicant’s proposed mark HIRA-TAIL, which the Opponent argued would lead to confusion and deception among the public, particularly given the medical nature of the goods. Both parties submitted extensive evidence under the relevant Trademark Rules (Rules 45, 46, and 47) to substantiate their claims of use, reputation, or lack thereof. Crucially, the Opponent’s evidence in reply noted inconsistencies in the Applicant’s trade names and the mark’s use on certain documents, asserting that products under the name HIRA were solely associated with their enterprise. Ultimately, the Assistant Registrar of Trade Marks, Delhi, adjudicated the matter, issuing an order to dismiss the opposition and allow the registration of the HIRA-TAIL device mark.

OPPONENT’S CLAIMS

The Opponent, M/S HIRA ENTERPRISES, made several key claims based on trademark law. First and foremost was the claim of superior prior rights and established reputation in the word mark HIRA. They argued that the Applicant’s mark, HIRA-TAIL, was deceptively and confusingly similar to their prior mark. The addition of the suffix “TAIL” was deemed insufficient to distinguish the marks, leading to a high likelihood of consumer confusion and deception, a critical factor for medicinal products. Furthermore, the Opponent alleged that the adoption of the mark HIRA-TAIL was dishonest, being a deliberate attempt to illegally trade upon the extensive goodwill and reputation built by the HIRA mark in the market for pharmaceutical/Ayurvedic preparations.

APPLICANT’S CLAIMS

In response, the Applicant, Dinesh Kumar Jain, asserted the inherent and acquired distinctiveness of the composite device mark HIRA-TAIL since 28/01/1998. The Applicant claimed that the mark was visually, structurally, and phonetically different from the Opponent’s registered mark HIRA, and therefore, no likelihood of confusion existed. They maintained that their adoption of the mark was honest and that the continuous, exclusive, and extensive use of HIRA-TAIL had resulted in substantial goodwill, exclusively associating the mark with their goods. The Applicant also argued that the goods of the Applicant i.e. Ayurvedic Oil and Opponent’s goods tobacco and Gutkha are highly different so as their trade channels or purchasing public.

Basis of Granting the Trademark

The Assistant Registrar’s decision to dismiss the opposition and grant the trademark was founded on three main findings, which constitute the official basis for the grant:

  1. Finding of Difference: The Registrar explicitly concluded that the Applicant’s device mark HIRA-TAIL was visually, structurally, and phonetically different from the Opponent’s word mark HIRA. This finding served as the primary justification for overcoming the opposition based on deceptive similarity.
  2. No Likelihood of Confusion or Deception: Following the finding of difference, the Registrar held that there was no likelihood of confusion or deception on the part of the public, effectively ruling out the application of Section 11(1) of the Trade Marks Act, 1999.
  3. No Evidence of Dishonesty: The Registrar specifically noted the lack of “evidence on record to show that either any confusion among the public caused by the impugned mark or the applicant has dishonestly adopted the impugned mark,” thereby upholding the Applicant’s proprietary claims under Section 18(1) of the Act. The Registrar’s reasoning also included the view that once marks are deemed different, the question of dishonest adoption “does not arise.”
  4. Difference in Goods: The Registrar concluded that the Applicant’s goods and the Opponent’s goods are different and therefore, chances of confusion do not exist.

CONCLUSION

The Assistant Registrar of Trade Marks, Delhi, dismissed the opposition filed by M/S HIRA ENTERPRISES and allowed the registration of the device mark HIRA-TAIL in Class 05. The decision was predicated on the finding that the marks were sufficiently different and posed no risk of public confusion or deception.

Mark Shield was pleased to assist the Applicant before Assistant Registrar of Trade Marks, Delhi.

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