The Delhi High Court recently restrained Bodhisatva Charitable Trust and others (“Defendants”) operating health centres under the names Mayo Medical Centre, Mayo Institute of Medical Sciences, Mayo School of Nursing, and Mayo Hospital from using the Mayo Foundation for Medical Education & Research’s (“Plaintiff”) trade mark MAYO in any manner, in relation to healthcare and medical education services.
The Plaintiff is a non-profit American academic medical centre focused on healthcare, education and research. The Plaintiff contended that they became aware of the Defendants’ unauthorized adoption of the MAYO mark in 2014, and since then, it has issued legal notices and opposed the Defendants’ applications to register the MAYO mark at the Trade Marks Registry. It also relied on the testimonials from the Defendants’ websites stating that they were inspired by the founder of the Plaintiff, Dr. William Mayo, to set up their establishment.
The Defendants challenged the validity of the suit on the grounds of lack of territorial jurisdiction (since the Defendants’ facilities were located in Uttar Pradesh), delay, laches and acquiescence, as well as on the grounds that the trademark MAYO is a common word in India, and that the Plaintiff had failed to prove its goodwill and reputation in India.
The court observed that ‘hospitals’ and ‘medical education’ are allied and cognate to ‘’medical journals and periodicals’, the goods covered by the Plaintiff’s registration in India. Accordingly, the Defendants’ use of the MAYO mark amounts to trade mark infringement. The court also noted that the use of the MAYO mark in relation to healthcare services is completely arbitrary and distinctive. Lastly, the Court observed that the fields of healthcare and medicine have an international character, and since the Plaintiff was able to prove its global reputation, it was evident that the Defendants’ adoption of the MAYO mark was with mala fide intentions. Accordingly, the court restrained the Defendants from using the MAYO mark till the disposal of the suit.
Mayo Foundation for Medical Education & Research v. Bodhisatva Charitable Trust and Ors. [CS(COMM) 920/2022], Judgment dt. May 29, 2023