Recently, in a trademark battle over the use of “MAYO” in healthcare and educational services, the Delhi High Court was called upon to examine whether long-standing use, alleged acquiescence, and claims of non-cognate goods could shield a party from an infringement action by a globally reputed medical institution. The case posed intricate questions on allied and cognate services, statutory defences under the Trade Marks Act, 1999, and the presumption of confusion in identical mark disputes. Read on to discover how the Court addressed these issues and interpreted the statutory provisions in light of established precedent.
Brief Facts:
The Mayo Foundation for Medical Education and Research filed a trademark infringement and passing off suit against Bodhisattva Charitable Trust and others for using “MAYO” in healthcare and educational services, claiming trademark rights over “MAYO” and “MAYO CLINIC” registered since 1992 and later in relevant classes from 2008. Alleging adoption inspired by its founder, Dr. William Mayo, and continued use despite a 2014 cease-and-desist notice, the Foundation obtained an interim injunction from the Delhi High Court in May 2023, which the appellants contested, citing prior use, delay, acquiescence, and distinct services.
Contentions of the Appellants:
The appellants argued that their healthcare and educational services were neither allied nor cognate to the respondent’s 1992 Class 16 registrations for periodicals and journals, while relying on Gopal Engg. & Chemical Works v. POMX Laboratory. They claimed prior use since 1995 for healthcare and 2011–2012 for education, predating the respondent’s 2008 Class 41 registration, and contended that “MAYO” was a common term not subject to monopoly. Invoking Section 33(1) of the Trade Marks Act, the appellants urged that the respondent’s knowledge of their use since 2011–2012, coupled with an eight-year delay after the 2014 notice, amounted to delay, laches, and acquiescence. They challenged territorial jurisdiction under Banyan Tree Holding (P) Ltd. v A. Murali Krishna Reddy, contended that there was no likelihood of confusion given their small-town patient base and the respondent’s alleged absence of Indian goodwill prior to 1995. They further asserted that, in an infringement claim, the presence of additional matter was inconsequential.
Contentions of the Respondent:
The respondent argued that the appellants infringed their 1992 Class 16 registrations, as healthcare and educational services were allied and cognate thereto under Renaissance Hotel Holdings Inc. v. V. Vijaya Sah, and also infringed the 2008 Class 41 “MAYO CLINIC” mark, adopted by the appellants only in 2011–2012. They described “MAYO” as an arbitrary, distinctive house mark with global priority under Milmet Oftho Industries v Allergan Inc, citing late 19th-century US use, over 33 crore Indian website sessions, and media exposure. Alleging dishonest adoption inspired by Dr. William Mayo and the respondent’s US clinic, as reflected on appellants’ websites, they claimed this negated honesty and defeated delay defences. They maintained there was no acquiescence given the 2014 cease-and-desist notice, and that Section 34 was inapplicable as appellants’ use postdated registrations. Invoking Sections 29(2)(c) and 29(3), they asserted presumed confusion from identical marks and services, adding that the appellant’s abandoned trademark application estopped them from disputing distinctiveness. They further relied on common law rights, Indian goodwill, and passing off, and argued that territorial jurisdiction was a mixed question not fit for prima facie rejection.
Observation of the Court:
The Court observed that the respondent's 1992 Class 16 registrations for "periodicals, medical or other journals, printed matter" extended to allied and cognate services like hospitals and medical education provided by the appellants, referring to the case of Renaissance Hotel Holdings Inc. v. V. Vijaya Sahi, and rejected the appellant's reliance on Gopal Engg. & Chemical Works v. POMX Laboratory for non-cognate classification.
It highlighted statutory interpretations under the Trade Marks Act, 1999, noting that Section 28(1) confers exclusive rights and relief against infringement upon valid registration, with Section 31(1) providing prima facie validity evidence. The Bench clarified that non-user by the respondent until 2022 was irrelevant to infringement under Section 29 of the Trade Marks Act, 1999, as relief depends on subsisting registration, not commercial use, unless removed by application of Section 47, which the appellants had not pursued. While addressing acquiescence, the Court held Section 33 inapplicable to unregistered marks and negated the plea due to the 2014 cease-and-desist notice. The Bench reiterated, while referring to the case of Power Control Appliances v. Sumeet Machines Pvt. Ltd., "Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches."
Further the Court rejected Section 34 protection, as appellant's 1995 use postdated the respondent's 1992 registration, and for education, the 2008 Class 41 registration predated appellant's 2011-2012 use, emphasising that "the use of the words 'whichever is earlier' in Section 34 results in the Section being applicable only where the defendant has been using the infringing mark from a point of time prior to the date of registration as well as user of the plaintiff’s mark." The Court invoked Section 29(2)(c) read with 29(3) of the Trade Mark Act, 1999 for presumed confusion from identical marks and reiterated while referring to the case of Midas Hygiene Industries (P) Ltd v Sudhir Bhatia, "In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
The decision of the Court:
In the light of the foregoing discussion, the Court dismissed the appeal, while upholding the single judge's interim injunction restraining the appellants from using "MAYO" or deceptively similar marks, with no orders as to costs.
Case Title: Bodhisattva Charitable Trust and Ors. Vs. Mayo Foundation For Medical Education And Research
Case No: FAO(OS) (COMM) 73/2024 & CM APPL. 22687/2024
Coram: Justice C. Hari Shankar, Justice Om Prakash Shukla
Advocate for Appellant: Sr. Adv. Jayant K Sud, Advs. Vishal Dabas, Shayal Anand, Sai Manik Sud, Sahib Kochhar, Aishwarya Sharma
Advocate for Respondent: Advs. Raunaq Kamath, Yash Raj, Yashi Bajpai, Aishwarya Kane
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