Mayo Foundation for Medical Education and Research vs. Bodhisatva Charitable Trust and Ors.

Citation: MANU/DE/3642/2023                                     Neutral Citation: 2023/DHC/003799

Court: IN THE HIGH COURT OF DELHI

Decided On: 29.05.2023

Hon’ble Judge/Coram: Amit Bansal, J.

In a legal battle that has captured international attention, the Mayo Foundation for Medical Education and Research, a renowned medical center from the United States, has found itself embroiled in a trademark dispute with Bodhisatva Charitable Trust and others, operating medical institutions in India. At the heart of the matter lies the unauthorized use of the trademark “MAYO” by the defendants in relation to healthcare and educational services. This article delves into the intricacies of the case, examining the arguments presented by both parties and the court’s reasoned decision.

Introduction:

The case involves a dispute between Mayo Foundation for Medical Education and Research (the plaintiff), a renowned medical center based in the United States, and Bodhisatva Charitable Trust and others (the defendants), operating medical institutions in India. The plaintiff claims to be the owner of the trademark “MAYO” and alleges that the defendants have infringed their trademarks and engaged in passing off by using the mark “MAYO” in relation to healthcare and educational services. The plaintiff seeks a permanent injunction against the defendants and other ancillary reliefs.

Procedural History:

The plaintiff filed a suit seeking injunctive relief against the defendants. The defendants filed a written statement, which was filed beyond the prescribed period. The plaintiff then filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) seeking interim relief.

Issues Presented:

The specific legal issues addressed in the court’s decision include:

• Whether the plaintiff is entitled to the grant of an interim injunction under Order XXXIX Rules 1 and 2 of the CPC.
• Whether the defendants’ use of the mark “MAYO” amounts to trademark infringement and passing off.

Rules of Law:

The relevant legal principles and rules applicable to the case include:

• Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1 and 2: Provision for granting interim injunctions to prevent the breach of rights.
• Code of Civil Procedure, 1908 (CPC) – Section 20(c): Jurisdiction of the court in cases where the cause of action arises within its territorial limits.
• Trade Marks Act, 1999 – Section 11(6): Prohibition on registration of marks identical or deceptively similar to well-known trademarks.
• Trade Marks Act, 1999 – Section 29(2): Prohibition on the unauthorized use of a registered trademark.
• Trade Marks Act, 1999 – Section 34: Remedies for trademark infringement, including injunctive relief.

Arguments

Based on the arguments presented by both parties in the case Mayo Foundation for Medical Education and Research vs. Bodhisatva Charitable Trust and Ors., here are the main points raised:

Plaintiff’s Submissions:

• The plaintiff argues that they have registered the marks ‘MAYO’ and ‘MAYO CLINIC’ in Class 16 in 1992 for medical journals and printed matter.
• They claim that healthcare and education services are related to medical journals and printed matter, and therefore, the defendant’s use of the plaintiff’s registered mark in relation to healthcare and education services constitutes infringement.
• The plaintiff alleges that the defendant’s adoption of the ‘MAYO’ trademark is dishonest and an attempt to benefit from the goodwill and reputation of the plaintiff, as indicated by statements on the defendant’s website referring to Dr. William Mayo and their founder’s medical background.
• The plaintiff argues that delay cannot be a defense when the defendants’ adoption of the mark is dishonest.
• They state that they have provided notice to the defendants through a legal notice in 2014 and filed opposition proceedings against the defendants’ trademark application, therefore refuting any claims of acquiescence.
• The plaintiff claims that they registered the mark ‘MAYO’ for educational services in 2008, while the defendants only started using the mark for education in 2011/12.
• They argue that the mark ‘MAYO’ has acquired a reputation and goodwill in India, and the defendant’s use of the mark is likely to cause confusion among the public.
• The plaintiff asserts that the defendants’ interactive websites, allowing customers to make appointments and book health check-ups, establish territorial jurisdiction in Delhi.

Defendants’ Submissions:

• The defendants claim that they have been using the ‘MAYO’ mark since 1995 for healthcare facilities, prior to the plaintiff’s registrations in 1992.
• They argue that the ‘MAYO’ mark is not a well-known trademark in India, as there is no evidence that the relevant section of the public had knowledge of it.
• The defendants assert that there is no likelihood of confusion or association between their mark and the plaintiff’s mark, therefore no grounds for infringement under Section 29(2) of the Trade Marks Act, 1999.
• They state that for a passing-off claim, the plaintiff must prove goodwill and reputation in 1995 when the defendants started using the mark, which they argue the plaintiff has failed to do.
• The defendants contend that mere dishonesty cannot be a ground for granting an interim injunction and cite relevant case law.
• They argue that the suit is barred by acquiescence, delay, and laches, as the plaintiff knew about the defendant’s use of the mark since 2014, but filed the suit in December 2022.
• The defendants claim that mere access to their website from Delhi does not establish territorial jurisdiction, as their website does not have a payment gateway.
• They argue that ‘MAYO’ is a common name in India, associated with historical figures and the Mayo College in Ajmer, Rajasthan. They also highlight that ‘MAYO’ is a common surname in the West, and its dictionary meaning refers to mayonnaise.
• The defendants contend that the judgment in Milmet (Milmet Oftho Industries and Ors. vs. Allergan Inc. MANU/SC/0512/2004) relied upon by the plaintiff is not applicable to hospitals, and the subsequent judgment in Prius (Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., MANU/SC/1619/2017) considered and superseded the Milmet judgment.
• Without waiving their rights, the defendants offer to add the prefix ‘Dr Kailash Narayan’ to their existing name to distinguish it from the plaintiff’s trademark.

Plaintiff’s Rejoinder:

• The plaintiff argues that the defendant’s willingness to add a prefix to their existing names demonstrates the indefensibility of their initial adoption of the ‘MAYO’ mark and supports the balance of convenience in favor of the plaintiff.
• They contend that the defense of prior users under Section 34 of the Trade Marks Act, 1999 would not apply to the proposed mark of the defendants, and the plaintiff’s common law rights in the ‘MAYO’ mark in India should be considered for passing off purposes.

Analysis and Reasoning

The court’s reasoning and arguments in addressing the legal issues can be summarized as follows:

Registration of the “Mayo” Marks: The court notes that the plaintiff obtained registrations for the marks ‘MAYO’ and ‘MAYO CLINIC’ under Class 16, which deals with ‘periodicals, medical or other journals, printed matter.’ The court cites the Corn Products case[1], where the Supreme Court held that if a trade connection can be established between two commodities with similar trademarks, there is a likelihood of confusion or deception in the market. The court also refers to the FDC case[2], where it was held that ‘pharmaceutical preparations’ and ‘booking of appointment of doctors’ are allied and cognate services. Based on these precedents, the court concludes that ‘hospitals’ and ‘education services providing courses of instruction in medicine and health care’ are allied and cognate to ‘medical journals and periodicals as they all relate to the healthcare and medical education sector. Therefore, the court finds that the defendant’s use of identical marks in relation to similar services is likely to cause confusion and infringes on the plaintiff’s registered trademarks.

Honest Adoption of the Mark: The court finds that the adoption of the mark ‘MAYO’ by the defendants was dishonest. It notes that the founder of the defendant institutions was aware of ‘Mayo Clinic’ in the USA, drew inspiration from Dr. William Mayo (the founder of ‘The Mayo Clinic’), and had extensive education and medical qualifications from the USA. The court concludes that the adoption of the name ‘MAYO’ by the defendants was clearly dishonest.

Delay and Laches: The court cites the Midas case[3], where the Supreme Court held that delay alone cannot be a ground to deny an injunction if the adoption of the mark was dishonest. It also refers to the Hindustan Pencils case[4], which held that if the defendant acts fraudulently with the knowledge of violating the plaintiff’s rights, delay on the part of the plaintiff in taking action does not bar the grant of an injunction. The court finds that the defendants’ dishonest adoption of the mark ‘MAYO’ is sufficient to justify the grant of an injunction, despite any delay on the part of the plaintiff.

Acquiescence: The court notes that the plaintiff had sent a legal notice to the defendants in 2014, opposing their use of the mark ‘MAYO.’ The plaintiff had also filed an opposition to the defendants’ trademark application for the device mark ‘Mayo Institute of Medical Sciences.’ The court finds that the plaintiff had put the defendants on notice and there was no acquiescence on the part of the plaintiff to the use of the mark ‘MAYO’ by the defendants.

Added Matter: The court mentions that the defendants proposed adding a long prefix to all their existing names wherever the mark ‘MAYO’ occurs. The court paid reliance of the case of Kaviraj Pandit[5] which said:

“Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”

According to the Delhi High Court, even if the defendant adds the prefix “Dr. Kailash Narayan” to the name “Mayo,” it does not eliminate the likelihood of confusion. The proposed name “Dr. Kailash Narayan Mayo” still creates a false impression of affiliation or association between the defendant and the plaintiff. The addition of a prefix does not dispel confusion because the essential feature of the plaintiff’s mark, “MAYO,” remains a part of the defendant’s name. Therefore, the court believes that infringement is likely to continue based on this preliminary assessment.

Territorial Jurisdiction: The Delhi High Court analyzed the issue of territorial jurisdiction in a case where the defendants argued that the mere accessibility of their website in Delhi does not give jurisdiction to the Delhi courts. The defendants relied on the Banyan Tree judgment[6], which stated that the website’s interactivity alone does not establish jurisdiction. To establish jurisdiction, it must be shown that the website’s activity involved commercial transactions with users. The court summarized the relevant findings of the Banyan Tree case, stating that in order to establish jurisdiction, the plaintiff must demonstrate that the defendant purposefully availed itself of the forum court’s jurisdiction and that the defendant’s targeting of the forum state caused injury to the plaintiff. The court also addressed the burden on the plaintiff to establish jurisdiction in cases where the defendant’s website is accessible in the forum state. The plaintiff must prima facie show that the website specifically targeted viewers in the forum state for commercial transactions, resulting in injury or harm to the plaintiff. The defendants argued that the plaintiff failed to show that their website intended to conclude a commercial transaction. However, the plaintiff presented screenshots of the defendant’s website, which allowed consumers to make appointments and book health check-ups within the jurisdiction of the court. The plaintiff also highlighted that the defendant’s services were being offered to entities within the court’s jurisdiction. The court concluded that the issue of territorial jurisdiction is a mixed question of law and fact that would be determined based on the evidence presented by both sides. At the current stage, the court declined to reject the suit based on territorial jurisdiction.

Holding and Decision:

The court holds that the defendant’s use of the mark ‘MAYO’ infringes the plaintiff’s registered trademarks and grants an interim injunction in favor of the plaintiff.

Implications and Significance:

The court’s decision has broader implications for the protection of registered trademarks in the healthcare and medical education sector. It establishes that allied and cognate services can be considered in determining the likelihood of confusion or deception in the market. The court’s emphasis on the dishonest adoption of the mark by the defendants and the lack of acquiescence by the plaintiff highlights the importance of good faith and timely action in trademark disputes. The decision reinforces the rights of trademark owners and the need to protect their marks against infringement.

[1] Corn Products Refining Co. vs. Shangrila Food Products Ltd. MANU/SC/0115/1959

[2] FDC Limited v. Docsuggest Healthcare Services Private Limited and Anr., MANU/DE/0011/201

[3] Midas Hygiene Industries P. Ltd. and Ors. vs. Sudhir Bhatia and Ors. MANU/SC/0186/2004

[4] Hindustan Pencils (P) Ltd. vs. India Stationery Products Co. and Anr. MANU/DE/0383/1989

[5] Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories MANU/SC/0197/1964

[6] Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy and Anr. MANU/DE/3072/2009