Manmohan Singh, J. (Oral)
1. The plaintiff in the above said matter filed the suit for permanent and mandatory injunction restraining the defendant from passing off, dilution, etc. of the plaintiff’s mark 'UMEED'.
2. Brief facts of the case are that the plaintiff is a registered Trust and is inter-alia engaged in charitable activities through 'UMEED' – the NGO, which is stated to be one of the largest NGOs in the country providing various social services including Primary Healthcare, Rural Development, Rural BPO, Education and Social Empowerment since the year 1997. The plaintiff in 1997 got registered in the name of 'Khanna Foundation'. Then in July, 1999, the name of the plaintiff was changed to 'Umeed Khanna Foundation' and since February, 2006, the name was again changed to 'UMEED'.
3. The case of the plaintiff is that the plaintiff has used the said word in isolation or in association with various other words which reflect the uniformity and consistency in the plaintiff’s identification of its services by the word 'UMEED'. The registration under the said trade mark is pending in the name of the plaintiff.
4. The grievance of the plaintiff against the defendant is that the plaintiff came to know about the defendant from its website www.umeedhealthcare.com which claims that the defendant is a registered society under the Societies Registration Act who claims to have started the same in order to help the poor and underprivileged children who need medical treatment. In the website, the defendant has claimed that it is running an NGO in the name and style of 'UMEED HEALTH CARE SOCIETY'. Thus, it is a case of confusion and deception and in fact, the defendant in the public at large is creating the confusion in order to show that it has some association, connection or source with the plaintiff which, in fact, is untrue. The defendant is also diluting the name 'UMEED' by using the identical name which is highly distinctive and associated with the plaintiff exclusively. The plaintiff is the prior user of the said name.
5. The suit as well as the interim application was listed before Court on 8th November, 2011. After hearing, the Court passed the ex parte ad-interim injunction order restraining the defendant from using the name and mark 'UMEED' or any deceptively similar trademark. The said interim order has been continuing from time to time. Even, the plaintiff has filed an application being I.A. No.19813/2011 under Order XXXIX Rule 2A read with Section 151 CPC and Section 12 read with Section 2A of the Contempt of Courts Act, 1971 alleging that despite of the interim order passed by this Court, the defendant is still using the deceptively similar name 'UMED'. The justification given by the defendant is that the names 'UMED' and 'UMEED' are dissimilar. The mark 'UMED' was adopted by the defendant from the name of the father of the President of the Society.
6. Learned counsel for the defendant on the last date of hearing argued before the Court that the earlier name used by the defendant 'UMEED' and the name used by the defendant after passing the interim order, i.e. 'UMED', are not deceptively similar. Arguments were heard for some time. After hearing, this Court was of the considered view that the two names are deceptively similar. Therefore, the learned counsel for the defendant was asked to take the instructions from his client in case the disputes between the parties could be resolved.
7. When the matter is taken up today before Court, the statement was made by the learned counsel for the defendant that in case, the plaintiff will not press the reliefs for damages, rendition of account and cost, the defendant would change its name to 'REHAM UMED HEALTH CARE SOCIETY' in order to avoid any confusion or deception. It appears to the Court that in case the defendant will use the above said name, there would not be any confusion or deception in the market. The suggestion of the Court is very fairly acceptable to the learned counsel for the plaintiff who states that in case the defendant will use the changed name 'REHAM UMED HEALTH CARE SOCIETY', the plaintiff has no objection if a mere decree for permanent injunction is passed in favour of the plaintiff and the plaintiff will not press the relief for the damages, cost and rendition of accounts.
8. Having considered the submissions of the parties, I am of the view that the defendant may use the said name, i.e. 'REHAM UMED HEALTH CARE SOCIETY' from today onwards. A decree for permanent injunction is passed in favour of the plaintiff and against the defendant in terms of para 27A of the plaint which reads as under:-
'27A. A Decree of permanent and mandatory injunction be granted in favour of the Plaintiff and against the Defendant, its employees, partners, constituents, affiliates, assigns, representatives etc. from using the mark 'UMEED' in relation to its Non-Governmental Organisation or any other mark or name which is similar to Plaintiff’s mark 'UMEED' in relation to any NGO or any other activity allied and cognate to Plaintiff’s organization, thereby resulting in passing off and further from doing any act including use of the word 'UMEED' for its organisation resulting in dilution of Plaintiff’s nam
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e or trademark; from indulging in any activities which may constitute act of unfair competition; and further a mandatory injunction directing the defendant to change its name.' 9. The other reliefs are already given up by the plaintiff. A decree be drawn accordingly. 10. The suit and the interim application being I.A. No.17528/2011 are accordingly disposed of as also another pending application being I.A. No.19813/2011 filed by the plaintiff under Order XXXIX Rule 2A read with Section 151 CPC and Section 12 read with Section 2A of the Contempt of Courts Act, 1971.