Delhi High Court holds use of ‘MAYO’ for medical services is in bad faith
The parties in the suit are at odds over the use of the mark MAYO for medical, hospital, and healthcare-related business. The Plaintiff Mayo Foundation for Medical Education and Research (Mayo Clinic) filed a suit before the Delhi High Court against the Defendants Bodhisatva Charitable Trust and Ors. (BCT) for using the mark MAYO to run Mayo Medical Centre Private Limited, Mayo Medical Center, Mayo Institute of Medical Sciences, Mayo School of Nursing, and Mayo Hospital. An application filed by BCT in 2012 in class 41 for the mark was opposed by the Mayo Clinic and was abandoned by BCT in 2018. In 2020 and 2021, it was found that BCT continued to use the mark ‘MAYO’ concerning healthcare and educational services, including its websites: www.mayomedicalcenter.com and www.mayoschoolofnursing.com.
The case at the admission stage was referred to the mediation centre, but the settlement could not materialize. The case was therefore heard at length, and the post summarises the contention of the parties and the Court’s ruling.
Mayo Clinic contentions:
- They are an internationally well-known medical center incorporated under the laws of the United States of America. It is recognized for offering clinical, educational, diagnostic & research services.
- Dr. Mayo opened the first private clinic in Rochester in the 1880s, and his sons established the Mayo Clinic in 1914. It operates under the trademark/name ‘MAYO’ in Rochester, Minnesota; Jacksonville, Florida; and Pheonix, Arizona, employing over 73,000 personnel. Use of the mark ‘MAYO’ in relation to healthcare services is completely arbitrary and distinctive.
- Mayo Clinic registered its trademarks in India in the year 1992. By various publications in newspapers, magazines, and online publications, Mayo Clinic has received widespread exposure and acceptance in the field of health and medicine in India.
- Mayo Clinic has registered the websites www.mayoclinic.org, www.mayo.edu, and www.mayoclinic.com.
- The website of the BCT clearly states that they gathered inspiration from Dr. William Mayo of ‘The Mayo Clinic,’ U.S.A., and their founder studied medicine and worked in hospitals in the U.S.A. Therefore, the adoption of the trademark ‘MAYO’ by the BCT is dishonest.
- It is an admitted position that BCT started using the mark ‘MAYO’ for education only in the year 2011/2012, whereas Mayo Clinic registration under class 41 for educational services is since the year 2008. Further, Mayo Clinic issued a legal notice and also initiated opposition proceedings. Thus, there cannot be any question of acquiescence.
- The websites of the BCT are interactive and allow customers to ‘take an appointment’ and ‘book a health check-up,’ which can be done from Delhi. Further, the BCT offers its services under the mark ‘MAYO’ to entities in Delhi, such as Indira Gandhi Airport, Delhi, and Aakashvani Delhi, as well as other entities based in Delhi. Therefore, the territorial jurisdiction of this Court is made out.
- BCT is a non-government BCT established in the year 2000 and is in the business of the medical field and providing help for medical and surgical treatment. It operates the Mayo Medical Centre Private Limited, Mayo Medical Center, Mayo Institute of Medical Sciences, Mayo School of Nursing, and Mayo Hospital. These institutions mainly cater to patients from small towns of Eastern Uttar Pradesh who are not aware of the Mayo Clinic, U.S.A.
- Mayo Clinic, U.S.A. has no goodwill in India and cannot claim a monopoly over the word MAYO as it is not a coined term. Hence, they are not entitled to protection as a ‘well known trademark’.
- Mayo Clinic, U.S.A. was aware of them using the mark MAYO since 2011/2012, but the present suit was filed by them in 2022. Hence it is barred by acquiescence, delay, and Laches.
- The Court does not have jurisdiction simply on the basis that BCT websites are accessible in Delhi and would not clothe the Court with territorial jurisdiction.
- ‘MAYO’ is a common name in India, being the name of one of the Viceroys of India and on whose name the famous Mayo College was established at Ajmer, Rajasthan in India. Further, it is a common surname in the West. The dictionary meaning of the word ‘MAYO’ shows that it is the informal word used for “Mayonnaise.”
- Mayo Clinic failed to prove goodwill and reputation in 1995 when the BCT started using the mark MAYO. Thus, no case of passing off is made out.
- BCT also filed an affidavit agreeing to add the prefix’ Dr. Kailash Narayan’ to their existing name so as to distinguish the same from the Mayo Clinic trademark.
Court’s analysis and findings:
Who is the prior user?
- The registrations for the mark MAYO and MAYO CLINIC were obtained in 1992 for medical and education services even though it falls in class 16 since only classes 1 to 34 were available at the time.
- ‘Hospitals’ and ‘education services providing courses of instruction in medicine and health care’ would be allied and cognate to ‘medical journals and periodicals as they all relate to the healthcare and medical education sector. Therefore, a prima facie infringement case under Section 29(2)(a) of the Trade Marks Act, 1999 is made out.
- The defence of prior use of the mark MAYO is not available to BCT as their use of the mark MAYO is subsequent to that of Mayo Clinic’s registration obtained for the mark MAYO in the year 2008 in classes 41 & 44.
- The use of the mark MAYO in relation to healthcare services is completely arbitrary and distinctive.
Whether the adoption of the mark “Mayo” by the BCT was honest
- The founder of the BCT, Dr. K N Singh, was not only aware of “Mayo Clinic” in the U.S.A. but drew inspiration from Dr. Wiliam Mayo, the founder of ‘Mayo Clinic,’ U.S.A. Therefore, the adoption of the name MAYO by the BCT was dishonest.
Delay and Laches
- The Court relied on the case of Midas Hygiene Industries (P) Ltd. And Anr. v. Sudhir Bhatia and Ors. and Hindustan Pencils (P) Ltd. v. India Stationery Products Co. and Ors. and held that BCT has dishonestly adopted the mark of Mayo Clinic, being fully aware of the prior existence and use of the same by Mayo Clinic. Therefore, even if there is a delay on the part of Mayo Clinic in filing the present suit, that cannot be a ground to deny the statutory right to them.
- Mayo Clinic had already addressed a legal notice to the BCT, filed a notice of opposition against their mark with the Trademarks Registry, and initiated mediation proceedings before initiating the suit. However, BCT failed to participate. Thus, there was no acquiescence on Mayo Clinic’s part.
Amending the name by BCT
- Filing an affidavit to add the prefix Dr. Kailash Narayan demonstrates that BCT can easily adopt a new name, and there is no justification for them to continue using MAYO as a part of their name.
- The marks involved are the same, and they are in respect of ‘hospitals’ and ‘educational services relating to medicine.’ Mayo Clinic’s mark has acquired sufficient reputation and goodwill in India by various sessions attended by users on their website, various news, health reports, publications in Indian newspapers, magazines, and online publications. Therefore, a prima facie case of passing off has been made out by Mayo Clinic.
- BCT’s website allows consumers to ‘take an appointment’ and ‘book a health check-up’ from within the jurisdiction of this Court. Further, BCT offers services to Indira Gandhi Airport, Delhi, and Aakashvani, Delhi, which falls within the jurisdiction of this Court.
Thus, a prima facie case of infringement and passing off is made out against the Defendants. Accordingly, the defendants were restrained from using the trademark/name “MAYO” or any mark/name deceptively similar thereto in any manner, including its use for hospitals, clinics, domain names, and listings on any social media platforms and third-party websites till the final adjudication of the suit.