In CS(COMM) 920/2022-DEL HC- Mayo Foundation gets relief in trademark infringement suit after Delhi HC restrains Healthcare Centre, Hospital & Institute from using Foundation’s mark ‘MAYO’
Justice Amit Bansal [29-05-2023]

Read Order:MAYO FOUNDATION FOR MEDICAL EDUCATION & RESEARCH Vs. BODHISATVA CHARITABLE TRUST & ORS 

Tulip Kanth

New Delhi, May 29, 2023: Terming the use of the mark “MAYO” by the defendant entities, operating in the field of health and medicine, as dishonest adoption, the Delhi High Court has restrained them from using the trademark of the leading internationally known medical center Mayo Foundation For Medical Education & Research.

The Bench noted that the plaintiff had put the defendants to notice as far back in 2014 against the use of the mark ‘MAYO’ by the defendants and despite that the defendants continued to use the mark of the plaintiff in a dishonest manner.

The plaintiff, a wholly owned subsidiary of Mayo Clinic, is a leading internationally known medical center recognized for  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 owns and operates campuses under the trade mark/name Mayo Clinic in Rochester, Minnesota; Jacksonville, Florida; and Phoenix, Arizona and employs approximately 73,000 personnel comprising of physicians, scientists and health staff.

The plaintiff has been the proprietor of the trademark 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 standalone word mark ‘MAYO’ dating back to 1992 in India. ‘MAYO’ is also the plaintiff’s house mark and constitutes 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.

The plaintiff has also obtained registration of the trade mark ‘MAYO’ and ‘MAYO’ formative marks in over 85 countries. The first Defendant Bodhisatva Charitable Trust is a non-government trust providing dissemination of education in the medical field and providing help for medical and surgical treatment. The second Defendant-Mayo Medical Centre Private Limited is operating a multi- speciality health care centre under the name ‘Mayo Medical Centre’ and third Defendant-Mayo Medical Centre is a super-specialty hospital established by the first defendant. The fourth Defendant- Mayo Institute of Medical Sciences was established by the first defendant in 2012 and offers medical courses.Other defendants operating in the same field go by the names of  Mayo School of Nursing & Mayo Hospital. 

The plaintiff became aware of the dishonest adoption of the trademark ‘MAYO’ by the defendant in 2014. The first defendant had also filed a trademark application for the device mark,  in Class 41 relating to ‘Institute for Medical Sciences and Educational Services’, which was opposed by the plaintiff. The said application stood abandoned but in 2020, it came to the plaintiff’s notice that the first defendant continued to use the mark “MAYO” in relation to healthcare and educational services.

The plaintiff also came to know that the defendants were using the plaintiff’s registered mark ‘MAYO’ on, display boards, prescription slips, OPD slips, invoices as well as in their trade names and business concern. Accordingly, the suit was filed seeking the relief of permanent injunction against the defendants restraining them from infringement of the registered trademarks of the plaintiff as well as passing off along with other ancillary reliefs.

The Bench opined that 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 to show an association with the registered trademarks of the plaintiff. Therefore, it was held that a prima facie case of infringement in terms of Section 29(2)(a) of Trade Marks Act, 1999 was made out.

The Bench also rejected the submission of the defendants that the word ‘MAYO’ is a name common to trade and therefore, not entitled to protection as a registered trademark. 

It was observed that the adoption of the name ‘MAYO’ by the defendants was clearly dishonest as  the founder of the defendant institutions was not only aware of ‘Mayo Clinic’ in the USA but drew inspiration from Dr.Wiliam Mayo, the founder of ‘Mayo Clinic’, USA. It also emerged that the founder had studied extensively in the USA. 

An additional affidavit filed on behalf of the defendants came to light wherein without prejudice to their rights and contentions, the defendants had agreed to add a long prefix to all the existing names of the defendants wherever the mark ‘MAYO’ occurred i.e. if the name is Mayo Medical Centre Pvt. Ltd. they proposed the new name- Dr Kailash Narayan Mayo Medical Centre Pvt Ltd.

“I am unable to fathom the insistence of the defendants to continue using the name ‘MAYO’, when admittedly the defendants do not have any rights in the aforesaid name and the adoption by the defendants in the first place was dishonest. If the defendants are willing to add the name of the founder, ‘Dr. Kailash Narayan’ as a prefix to their institutions, there is no justification for them to continue using ‘MAYO’ as a part of their name”, the Bench said.

The High Court was of the view that the adoption by the defendants of an identical trademark in relation to identical services was an attempt to ride on the goodwill and reputation of the plaintiff and therefore, a prima facie case of passing off had been made out by the plaintiff.

Noting that a prima facie case of infringement as well as passing off was made out on behalf of the plaintiff, the Bench restrained the defendants from using the plaintiff’s trade mark/ name “MAYO '' or any mark/name deceptively similar to it.