Delhi High Court Restrains Bodhisatva Charitable Trust From Using Trademark 'Mayo', Grants Interim Relief To US-Based Mayo Foundation

Granting interim relief to Mayo Foundation for Medical Education and Research — a subsidiary of US -based charitable organisation Mayo Clinic, the Delhi High Court has restrained Bodhisatva Charitable Trust from using the trademark “Mayo” or any mark or name deceptively similar to it.

The Indian NGO and its associates have been particularly restrained from using names like Mayo Institute Of Medical Sciences, Mayo Medical Centre, Mayo Medical Centre Private Limited, Mayo Hospital, Mayo Clinic, Mayo School Of Nursing, Mayo Pharmacy and Mayo Gastro-Liver Clinic.

The court passed the order in a trademark suit filed by Mayo Foundation against Bodhisatva Charitable Trust, a non-government trust established in 2000 for dissemination of medical education. The court held that a prima facie case of infringement and passing off was made out against the latter and the medical institutions established by it.

Justice Amit Bansal noted that the name “MAYO” was first adopted and used by Mayo Foundation in respect of hospitals and medical educational institutes. 

"Further, the mark “MAYO” has attained global reputation in the field of healthcare and medical education. On a prima facie view, the plaintiff’s trademarks have also acquired sufficient reputation and goodwill in India as is evidenced from 33 crore sessions by Indian users on the plaintiff’s website, www.mayoclinic.org and over 10 lakh sessions by Indian users on the plaintiff’s website, www.mayo.edu," said the court.

The court observed that the defendant-Trust and the medical institutions founded by it, had dishonestly adopted the impugned trademark, with an attempt to ride on the goodwill and reputation of Mayo Foundation. 

"Therefore, a prima facie case of passing off has been made out by the plaintiff," said the bench.

It was the case of Mayo Foundation that the defendant-Trust was using the former’s registered mark “MAYO” in relation to healthcare and educational services. It said that the super-specialty hospitals, clinics and health care centres established by the defendant-Trust were using the mark ‘MAYO’ on their display boards, prescription slips, OPD slips, invoices as well as in their trade names and business concern.

Mayo Foundation has sought permanent injunction against the defendant-institutions, restraining them from infringing its registered trademark as well as from passing off their products as the plaintiff’s. In its plea, Mayo Foundation said it has been regarded as the leading medical centre for research and specialist education and has garnered substantial goodwill and reputation over the years. It further said that it has obtained registration of the trade mark ‘MAYO’ and ‘MAYO’ formative marks in over 85 countries. It further argued that ‘MAYO’ is also its house mark and constitutes the essential and dominant part of its trading style and the domain names for its websites.

The court noted that in 1992, Mayo Foundation got the word marks ‘MAYO’ and ‘MAYO CLINIC’ as well as the device mark ‘MAYO’, registered under Class 16 which deals with ‘periodicals, medical or other journals, printed matter’. 

"The plaintiff obtained registration of the mark ‘MAYO CLINIC’ under Class 41 on 26th August, 2008, whereas the defendants began to use ‘MAYO’ for education purposes only in the year 2011/2012 as admitted by them in paragraph 30 of their reply to I.A.22385/2022. Therefore, the defence of prior use under Section 34 of the Trade Marks Act, 1999 would not be available to the defendants in respect of its medical education services," said the court.

The bench further observed that ‘hospitals’ and ‘education services providing courses of instruction in medicine and health care’ would be allied and cognate to ‘medical journals and periodicals’ as all of them relate to the healthcare and medical education sector.

“Since, the defendants are using identical marks in respect of services that are similar to the services of the plaintiff, it is likely to cause confusion in the public and is also likely show an association with the registered trademarks of the plaintiff. Therefore, a prima facie case of infringement in terms of Section 29(2)(a) of Trade Marks Act, 1999 is made out,” the court held.

While dealing with the contention that the word ‘MAYO’ is a name common to trade and therefore not entitled to protection as a registered trademark, the bench remarked that in its prima facie view, the use of the mark in relation to healthcare services is completely arbitrary and distinctive.

“The use of the mark ‘MAYO’ in ‘MAYO COLLEGE’ (by the defendants) is not relevant as it has nothing to do with the field of healthcare or medical education,” the court said.

Noting that the defendant-institutions had themselves filed an application for registration of the device mark ‘Mayo Institute of Medical Sciences’, the bench dismissed their plea that ‘MAYO’ is a name common to trade or has a dictionary meaning and is therefore, non-distinctive. The court held that in its prima facie view, the adoption of the name ‘MAYO’ by the medical institutions was clearly dishonest.

The court said that the defendants had dishonestly adopted the mark of Mayo Foundation, being fully aware of the prior existence and use of the same by the latter. Therefore, it concluded that even if there was delay on the part of Mayo Foundation in filing the suit, that in itself cannot be a ground to deny its statutory right.

“It cannot be denied that the name “MAYO” was first adopted and used by the plaintiff in respect of hospitals and medical educational institutes. Further, the mark “MAYO” has attained global reputation in the field of healthcare and medical education,” the court observed.

The court said a prima facie case of infringement as well as passing off is made out on behalf of the plaintiff.

"Balance of convenience is also in favour of plaintiff and against the defendants as the use of the identical mark ‘MAYO’ is likely to cause confusion in the minds of the consumer. The plaintiff shall continue to suffer irreparable injury to its goodwill and reputation if the defendants are permitted to offer their services under the infringing marks,” said the court.

Case Title: Mayo Foundation For Medical Education & Research vs Bodhisatva Charitable Trust & Ors.

Citation: 2023 LiveLaw (Del) 464

Dated: 29.05.2023

Counsel for the Plaintiff: Mr. Raunaq Kamath, Mr. Aditya Gupta and Ms. Aishwarya Kane, Advocates

Counsel for the Defendants: Mr. C.M.Lall, Senior Advocate with Ms. Aakanksha Kaul, Mr. Ashish Kumar, Ms. Versha Singh and Ms. Ananya Chugh, Advocates.

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