In a significant ruling delivered on July 28, 2025, the two judge Bench of the Delhi High Court (Division Bench) dismissed an appeal filed by Bodhisattva Charitable Trust (BCT) and maintained the injunction passed against them by the Single Judge from using the names such as Mayo Medical Centre, Mayo Institute of Medical Sciences, Mayo School of Nursing, and Mayo Hospital in relation to health care centre/clinic, hospitals in Uttar Pradesh.

Background

The US-based Mayo Foundation sued BCT and others alleging infringement of its registered trademarks and passing off, seeking permanent injunction and interim relief against use of “MAYO” and related names in medical and educational services. Mayo Foundation had addressed a cease and desist (C&D) notice in 2014, objecting to the adoption/use of MAYO, domain names www.mayomedicalcentre.com and www.mayoschoolofnursing.com, however, BCT continued using the mark. Mayo Foundation, therefore, filed the lawsuit for passing off and trademark infringement against the Appellants in the year 2022, alleging that:

1. MAYO is their house mark, dominant part of its trading style, domain names www.mayoclinic.org, www.mayo.edu, www.mayoclinic.com and their websites www.mayoclinic.org and www.mayo.edu have received extensive web traffic of Indian users.
2. MAYO and MAYO CLINIC trademarks were first registered in class 16 in 1992 for printed matter, medical journals, etc., and later MAYO CLINIC trademarks were registered in 2008 (in classes 10, 41 and 44 for surgical apparatus, educational services, healthcare and hospital services, etc.).
3. Use of MAYO for healthcare services is arbitrary and distinctive.
4. They are prior registered proprietor of the marks MAYO and MAYO CLINIC in India and a prior user of the MAYO mark internationally since the late 19th century. Appellants commenced use of MAYO for education services only in 2011-2012, much after the registration of MAYO CLINIC in class 41 for identical services w.e.f. August 26, 2008.
5. Adoption of MAYO by the Appellants is dishonest, considering they had themselves acknowledged inspiration from Dr. William Mayo of Mayo Clinic, USA, on their websites, and the founder of Mayo Institute of Medical Science (Appellant No. 4) has studied and worked in US hospitals before shifting to India.
6. Despite abandonment of the application (in 2018) filed by the Appellant for mark in class 41 claiming use since May 14, 2011, they continued to use the MAYO mark for healthcare and educational services.
7. Appellants, having themselves applied for registration of the mark in relation to healthcare services, cannot contend that it lacks distinctiveness. Plea of acquiescence is not applicable as Mayo Foundation issued a cease-and-desist notice in 2014.

Appellants submissions

1. They are prior user by virtue of its use of MAYO mark since 1995.
2. ‘Mayo Institute of Medical Sciences’ and ‘Mayo Hospital’ were established in the year 2012, whereas ‘Mayo School of Nursing’ was established in the year 2003.
3. ‘Mayo Medical Centre’ was set up in Lucknow in the year 2000 to offer medical services.
4. Their patients are from small towns of Uttar Pradesh and have not heard of Mayo Foundation. Thus, there is no likelihood of confusion.
5. MAYO cannot be monopolised since MAYO is a common Indian name and also an abbreviation of ‘Mayonnaise’.
6. There is a delay and acquiescence considering Mayo Foundation was aware of the use of MAYO by Appellants since 2012. Further, the court action was instituted eight years (in the year 2022) after the issuance of the C&D notice.
7. No case for infringement is established as they are not using the MAYO mark for goods/services in respect of which the marks MAYO and MAYO CLINIC are registered.The court does not have territorial jurisdiction.

The single judge ruled in favour of Mayo Foundation granting an interim injunction restraining BCT.

Appeal by BCT

The Appellants challenged the order before the two-judge bench (Division Bench) and submitted that:

1. They provide different services from the goods/services of Mayo Foundation.
2. Mayo Foundation commenced use of the MAYO and MAYO CLINIC marks in the year 2022, whereas they are a prior user of the MAYO mark since 1995.
3. Acquiescence to the use of MAYO for 30 years by Mayo Foundation.

Mayo Foundation submissions:

1. They are prior user of the MAYO mark, and the Appellants are liable for infringement of the registrations obtained for MAYO and MAYO CLINIC marks.
2. The rival marks are identical, and the nature of services is allied and cognate to the services provided by Appellants since the year 1995.
3. Given that the Appellants were using the identical word ‘Mayo’ for allied healthcare and educational services, confusion in the public mind is inevitable.
4. Adoption of MAYO mark by Appellants is dishonest.

Court Ruling

1. Trademark Infringement: The court found that the appellants were infringing on the registered trademarks of the respondent. The marks “MAYO” and “MAYO CLINIC” were registered in favour of the respondent as early as 1992, and the appellants began using the “MAYO” mark only in 1995.
2. Dishonest Adoption: The Appellants’ statements acknowledging inspiration from Dr. William Mayo and the founder of the Appellants had studied and worked in the US before establishing their institutions in India.
3. Acquiescence Rejected: The court rejected the Appellants’ plea of acquiescence and delay, stating that the respondent had issued a cease-and-desist notice to the Appellants in 2014, and the Appellants continued to use the mark at their own risk.
4. Priority of User No Defence: Section 34 of the Trademarks Act protects only if the defendant’s use predates both registration and use of the plaintiff’s mark, which was not the case here. The registrations of Mayo Foundation date back to 1992 and the Appellants admitted using “Mayo” only from 1995.

Our comment

The judgment reinforces that continued use of the trademark after cease-and-desist notice would not amount to acquiescence. The court’s holding that issuance of the cease-and-desist notice was a positive act that negated any claim of acquiescence and a step towards protecting rights by the brand owner is a much-needed clarity on this aspect.