In the Instant matter of Mayo Foundation for Medical Education and Research v. Bodhisatva Charitable Trust, The plaintiff filed an opposition in 2016 in response to Bodhisatva Charitable Trust’s trade mark application for the device mark in Class 41 relating to Institute for Medical Sciences and Educational Services. The Trade Marks Registry’s ruling declared the aforementioned application to be abandoned. The plaintiff learned in 2020 that the defendant had kept using the mark “MAYO” in connection with medical and educational services. As a result, the plaintiff brought the current lawsuit to get a permanent injunction barring the defendants from using the plaintiff’s registered trade marks infringingly or passing them off as their own.
The Mayo Clinic, the claimant, is a renowned charitable organisation with international recognition that was incorporated under American law and was a foremost medical centre recognized for providing medical care through a diverse physician-led team of people involved in offering clinical, educational, diagnostic, and research services in a coordinated multi-campus system. The claimant owned and ran several locations that went by the name “Mayo Clinic.” In respect to the goods and services given by the plaintiff in Classes 16, 41, 42, and other classes, including registration for the word mark “MAYO” in India in 1992, the plaintiff was the owner of the trade mark “MAYO” and MAYO formative markings. A non-government trust known as the defendant Bodhisatva Charitable Trust was set up in 2000 in accordance with the Indian Trust Act of 1882 to aid in medical and surgical treatment as well as the transmission of medical knowledge. As trustees of the defendant, a charity trust, they ran Mayo Hospital, Mayo School of Nursing, and Mayo Institute of Medical Sciences.
Observation of the court
Justice Amit Bansal of the Delhi High Court’s single judge bench banned the Bodhisatva Charitable Trust from using the trade name MAYO or any name that is confusingly similar to it in any way, including listings on any social media websites and independent websites, until the lawsuit’s final determination.
The Court noted that in 1992, The plaintiff obtained registration for the word marks “MAYO,” “MAYO CLINIC,” and the device mark “MAYO” under Class 16, which deals with “periodicals, medical or other journals, printed matter,” at a time when only Classes 1 to 34 were offered under India’s Trade Marks Act, 1999. Due to the lack of registrations under Class 41, which deals with educational services, and Class 44, which deals with medical and healthcare services, the plaintiff secured registrations under Class 16, which was the category that was most closely related to his activity. The Court held that the defendant’s use of the mark “MAYO” in “MAYO COLLEGE” was irrelevant and had nothing to do with the healthcare or medical education industries.
The Court stated that the plaintiff had established a prima facie case of infringement and passing off and that the balance of convenience was also in favour of the plaintiff and against the defendants because the use of the identical mark “MAYO” was likely to lead to consumer confusion. If the defendants were permitted to market their services using the infringing marks, the plaintiff would continue to sustain irreparable harm to its goodwill and reputation. The defendants were thus prohibited by the Court from using the plaintiff’s trade name, “MAYO,” or any confusingly similar name.