Delhi High Court: A Single Judge Bench of Amit Bansal, J.* restrained Bodhisatva Charitable Trust from using the trade mark/ name ‘MAYO’ or any mark/name deceptively similar thereto, in any manner including the marks/names ‘Mayo Institute of medical Sciences’, ‘Mayo Medical Centre’, ‘Mayo Medical Centre (P) Ltd.’, ‘Mayo Hospital’, ‘Mayo Clinic’, ‘Mayo School Of Nursing’, ‘Mayo Pharmacy’, and ‘Mayo Gastro-liver Clinic’; the domain names www.mayomedicalcentre.com and www.mayoschoolofnursing.com and listings on any social media platforms and third-party websites till the final adjudication of the suit.
Background
The plaintiff was a wholly owned subsidiary of Mayo Clinic, a world-class famous charitable organisation incorporated under the laws of the USA and was a leading internationally known medical center recognized for, inter alia, providing medical care through a diverse physician-led team of people involved in offering clinical, educational, diagnostic and research services in a unified multi-campus system. The plaintiff owned and operated campuses under the trade mark/name ‘Mayo Clinic’. The plaintiff was the proprietor of the trade mark ‘MAYO’ and MAYO formative marks in relation to the goods and services offered by the plaintiff in Classes 16, 41, 42 and 44 and other classes including a registration for the word mark ‘MAYO’ in 1992 in India. ‘MAYO’ was also the plaintiff’s house mark and constituted the essential and dominant part of the plaintiff’s trading style and the domain names for its websites www.mayoclinic.org, www.mayo.edu and www.mayoclinic.com.
Defendant 1, Bodhisatva Charitable Trust was a non-government trust established in 2000 under the Indian Trust Act, 1882 providing dissemination of education in the medical field and providing help for medical and surgical treatment. Defendant 1, being a charitable trust with Defendants 7 and 8 as its trustees, operated Mayo Institute of Medical Sciences (Defendant 4); Mayo School of Nursing (Defendant 5) and Mayo Hospital (Defendant 6). The plaintiff became aware of the dishonest adoption of the trade mark ‘MAYO’ by Defendant 1 in 2014 and therefore issued a legal notice in that regard. Defendant 1 had filed trade mark application for the device mark 
, in Class 41 relating to ‘Institute for Medical Sciences and Educational Services’, which was opposed by the plaintiff by filing opposition in 2016. The said application stood abandoned by the order of the Trade Marks Registry. In 2020, it came to the plaintiff’s notice that Defendant 1 continued to use the mark ’MAYO’ in relation to healthcare and educational services.
In 2021, the plaintiff engaged an investigator, whose report revealed that the defendants were using the plaintiff’s registered mark ‘MAYO’ on, inter alia, display boards, prescription slips, OPD slips, invoices as well as in their trade names and business concern. The plaintiff’s registered mark ‘MAYO’ was also being used as a part of the domain name on the websites of the defendants, www.mayomedicalcentre.com and www.mayoschoolofnursing.com. The defendants were also advertising their services in the fields of healthcare and medical education on social media platforms and third-party websites under the mark/name ‘MAYO’. Thus, the plaintiff filed the present suit seeking the relief of permanent injunction against the defendants restraining them from infringement of the registered trade marks of the plaintiff as well as passing off.
Analysis, Law, and Decision
The Court noted that in 1992, the plaintiff got the word marks ‘MAYO’ and ‘MAYO CLINIC’ as well as the device mark ‘MAYO’ registered under Class 16 dealing with ‘periodicals, medical or other journals, printed matter’ and at that point of time, there were only Classes 1 to 34 available under the Trade Marks Act, 1999 in India. The registrations under Class 41 dealing with educational services and Class 44 dealing with medical and health care services were not available and therefore, the plaintiff obtained registrations in Class 16, which was closest to the activities of the plaintiff.
The Court relied on Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, (2022) 5 SCC 1, wherein the plaintiffs trade mark ‘RENAISSANCE’ was registered under Class 16 for printed matter, periodicals, books, and Class 42 for ‘hotel, restaurant, catering’ and the defendant was using the mark ‘SAI RENAISSANCE’ in relation to hotels. The Supreme Court held that the adoption by the defendant of the aforesaid mark in relation to hotels would amount to infringement of the plaintiff’s registrations under Classes 16 and 42. Thus, this Court opined 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 were using identical marks in respect of services that were similar to the services of the plaintiff, it was likely to cause confusion in the public and was also likely to show an association with the registered trade marks of the plaintiff”. Therefore, the Court held that a prima facie case of infringement in terms of Section 29(2)(a) of Trade Marks Act, 1999 (‘Act’) was made out.
The Court opined that the use of the mark ‘MAYO’ in ‘MAYO COLLEGE’ by the defendants was not relevant, and it had nothing to do with the field of healthcare or medical education. The Court also relied on Indian Hotels Company Ltd. v. Jiva Institute of Vedic Science & Culture, 2008 SCC OnLine Del 1758 and opined that “the defendants themselves had filed an application for registration of the device mark (Mayo Institute of Medical Sciences) and therefore it did not lie in the mouth of the defendants that ‘MAYO’ was a name common to trade or had a dictionary meaning and was therefore, non-distinctive.
The Court noted that the founder of the defendant institutions, were not only aware of ‘Mayo Clinic’ in the USA but drew inspiration from the founder of ‘Mayo Clinic’, USA. The Court relied on FDC Ltd. v. Docsuggest Healthcare Services (P) Ltd., 2017 SCC OnLine Del 6381, wherein it was held that “where the defendants dishonestly adopted a mark that was identical to a prior registered trade mark, whether well-known or not, the benefit of prior user in terms of Section 34 of the Act would not be available to the defendants even if such use by the defendants was in respect of different goods and services”.
The Court further relied on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and Hindustan Pencils (P) Ltd. v. India Stationery Products Co., 1989 SCC OnLine Del 34, wherein it was held that “when the adoption by the defendants is dishonest, delay could not be a defence”. Moreover, in Modi-Mundipharma (P) Ltd. v. Preet International (P) Ltd., 2009 SCC OnLine Del 3922, it was held that “in cases of infringement of trade mark where a party had got exclusive and statutory rights by virtue of registration, the said right could not be defeated on the ground of delay”. Thus, this Court held that “even if there was delay on the part of the plaintiff in filing the present suit, that in itself could not be a ground to deny the statutory right of the plaintiff”.
The Court noted that the defendants had agreed to add a prefix ‘Dr. Kailash Narayan’ to all the existing names of the defendants wherever the mark ‘MAYO’ occurred. The Court thus opined that “if the defendants were willing to add the name of the founder, ‘Dr. Kailash Narayan’ as a prefix to their institutions, there was no justification for them to continue using ‘MAYO’ as a part of their name. Even adding a prefix to the essential feature or characteristic was unlikely to dispel confusion as the essential feature of the plaintiff’s mark ‘MAYO’ would remain a part of the defendants’ name. Therefore, prima facie, infringement would continue.”.
The Court opined that a prima facie case of infringement as well as passing off was made out on behalf of the plaintiff and balance of convenience was also in favour of plaintiff and against the defendants as the use of the identical mark ‘MAYO’ was likely to cause confusion in the minds of the consumer. The plaintiff would continue to suffer irreparable injury to its goodwill and reputation if the defendants were permitted to offer their services under the infringing marks. Thus, the Court restrained the defendants from using the plaintiff’s trade mark/ name ‘MAYO’ or any mark/name deceptively similar thereto, in any manner including the marks/names ‘Mayo Institute of medical Sciences’, ‘Mayo Medical Centre’, ‘Mayo Medical Centre (P) Ltd.’, ‘Mayo Hospital’, ‘Mayo Clinic’, ‘Mayo School Of Nursing’, ‘Mayo Pharmacy’, and ‘Mayo Gastro-liver Clinic’; the domain names www.mayomedicalcentre.com and www.mayoschoolofnursing.com and listings on any social media platforms and third-party websites till the final adjudication of the suit.
[Mayo Foundation for Medical Education and Research v. Bodhisatva Charitable Trust, 2023 SCC OnLine Del 3241, decided on 29-5-2023]
Advocates who appeared in this case :
For the Plaintiff: Raunaq Kamath, Aditya Gupta, Aishwarya Kane, Advocates;
For the Defendants: C.M. Lall, Senior Advocate; Aakanksha Kaul, Ashish Kumar, Versha Singh, Ananya Chugh, Advocates.
*Judgment authored by: Justice Amit Bansal
