Relief for Mayo Foundation against unlawful use of its “Mayo” marks by a charitable trust

INTRODUCTION

The Delhi High Court, vide a recent order granted interim relief to Mayo Foundation for Medical Education and Research (hereinafter referred to as ‘the plaintiff’) a subsidiary of US-based organization Mayo Clinic, by restraining Bodhisatva Charitable Trust and others (hereinafter referred to as ‘the defendants’ ) from using the trademark “MAYO” or any mark/name deceptively similar to it.

BACKGROUND

The plaintiff is known for providing medical care and education services under the trademark/name ‘Mayo Clinic’, and is the proprietor of the trademark MAYO and MAYO formative marks (hereinafter referred to as the “MAYO” marks) under Classes 16, 41, 42 and 44. Plaintiff has a registration for the standalone word mark ‘MAYO’ under Class 16 since 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.

The defendants were incorporated in 1995 and operate a hospital in Lucknow named ‘Mayo Medical Centre’, which started in the year 1999/2000.

FACTUAL MATRIX

The plaintiff contended that in 2014, it discovered that the defendants had fraudulently adopted the identical mark ‘MAYO’ and issued a legal notice in response to the same. Further, the plaintiff also filed an opposition in 2016 against defendants’ trade mark application for mark “ “ in Class 41. Later, the plaintiff learned that the defendants had continued the use of the mark “MAYO'' for medical and educational services and were using it on display boards, prescription slips, invoices, domain names and in their trade names. The defendants were also advertising aforementioned services on social media platforms under the mark ‘MAYO’. Aggrieved by such adoption, the plaintiff filed the current lawsuit, seeking permanent injunction restraining the defendants from infringing upon the plaintiff’s registered trade marks or passing them off as their own.

COURT’S FINDINGS

The Hon’ble Delhi High court’s findings are elucidated herein below:

Infringement and passing off

The court observed that plaintiff’s goods and services i.e., ‘medical journals and periodicals’ would be allied and cognate to defendant’s goods and services i.e., ‘hospitals’ and ‘education services providing courses instruction in medicine and health care’. Therefore, since the defendants are using identical marks for services similar to that of the plaintiff, there is a likelihood of confusion and association with the registered trademarks of the plaintiff and a prima facie case of infringement is made out. Further, plaintiff’s “MAYO” marks have acquired sufficient reputation and goodwill in India by various sessions attended by users on their website, various news, health reports, publications in Indian newspapers. Therefore, a prima facie case of passing off has also been made out by the plaintiff.

Prior user

The plaintiff obtained registration of the mark ‘MAYO CLINIC’ under Class 41 in 2008, whereas the defendants began to use ‘MAYO’ for education purposes only in the year 2011/2012 as admitted by them. Therefore, the defense of prior use under Section 34 of the Act would not be available to the defendants.

Whether the adoption of the “MAYO” mark by the defendants was honest

The court, after analyzing the website extracts from the defendants’ website which refer to the plaintiff’s MAYO clinic, USA, observed that the founder of the defendant institutions was not only aware of the plaintiff but drew inspiration from Dr. Wiliam Mayo, the founder of ‘Mayo Clinic’, USA. Therefore, the dishonest adoption by the defendants is proved.

Delay and Laches

The Court relied on the relevant cases [1] and held that defendants have dishonestly adopted the plaintiff’s mark despite being aware of the prior existence and use of it by plaintiff. Therefore, it held that even if there is a delay on the part of the plaintiff in filing the present suit, the same cannot act as a ground to deny the statutory right to the plaintiff.[2]

Acquiescence

The plaintiff had issued legal notice far back in 2014, filed a notice of opposition against defendants’ application for their mark “ ” with the Trademarks Registry, and initiated mediation proceedings before initiating the suit. However, defendants failed to participate and continued to use the mark of the plaintiff in a dishonest manner. Therefore, no acquiescence was found by the plaintiff.

Proposal by defendants to amend their mark

Court observed that proposing to add the prefix “Dr. Kailash Narayan”, demonstrates that defendants can easily adopt a new name, and there is no justification for them to continue using ‘MAYO’ as a part of their name. Further, even with the addition, there would be likelihood of confusion, as the proposed name ‘Dr. Kailash Narayan Mayo’ would convey a false impression of affiliation/association of the defendants with the plaintiff. Hence, adding a prefix to the essential feature or characteristic is unlikely to eliminate confusion as the essential feature of the plaintiff’s mark ‘MAYO’ would remain a part of the defendants’ name.

RELIEF GRANTED

The court held that prima facie case of infringement and passing off is made out by plaintiff. Further, the balance of convenience is also in favor of the plaintiff and against the defendants as the use of the identical mark ‘MAYO’ is likely to cause confusion in the minds of the consumer. The plaintiff shall continue to suffer irreparable injury to its goodwill and reputation if the defendants are permitted to offer their services under the infringing marks.

Thus, the defendants were restrained from using the mark “MAYO” or any mark/name deceptively similar in any manner till the final adjudication of the suit.

CONCLUSION

This decision of the Delhi High Court is significant as it reiterated the paramount role of recognition and goodwill in establishing acquired distinctiveness of any mark. Further, through decisions of such nature, the court has ensured that renowned marks which have established an exclusive repute in the global market are dynamically protected from being diluted and infringed upon, in India. The open and extensive use of an infringing mark by the defendants in the aforementioned case also acts as a warning for reputed brands such as the plaintiff in the present case, to remain vigilant in order to protect their invaluable Intellectual Property.

[1] Midas Hygiene Industries (P) Ltd. And Anr. v. Sudhir Bhatia and Ors. and Hindustan Pencils (P) Ltd. v. India Stationery Products Co. and Ors. [2] Modi-Mundipharma Pvt. Ltd. v. Preet International Pvt. Ltd. &Anr.