Trademark disputes commonly require courts to balance competing claims of registration, prior use, reputation, and honest adoption. Indian trademark law recognises the rights of prior users in certain circumstances and provides significant protection to registered proprietors. The Delhi High Court’s decision in the dispute between the Mayo Foundation for Medical Education and Research (“Mayo Clinic”) and Bodhisattva Charitable Trust [FAO(OS) (COMM) 73/2024], provides important guidance on the link between trademark registration, prior use, acquiescence, and infringement, particularly in the healthcare and medical education sectors.
The dispute began when Mayo Foundation for Medical Education and Research, a well-known medical institution based in the United States, initiated proceedings alleging trademark infringement and passing off against Bodhisattva Charitable Trust and its affiliated entities. The present decision arose from an appeal filed by Bodhisattva Charitable Trust and others against the interim injunction granted by the learned Single Judge on May 29, 2023. The defendants operated various healthcare and educational institutions under names incorporating the mark “MAYO,” including “Mayo Medical Centre,” “Mayo Institute of Medical Sciences,” “Mayo Hospital,” and “Mayo School of Nursing”. The injunction also covered domain names and online listings using the MAYO formative marks.
The plaintiff relied on its registrations for the marks “MAYO” and “MAYO CLINIC,” which dated back to 1992 and 2008, respectively. The plaintiff contended that “MAYO” constituted a significant and distinctive part of its brand identity and was used in connection with its medical, educational, and research activities. To support its claim of reputation and recognition in India, the plaintiff relied on evidence of its trademark registrations, website traffic from Indian users, domain name use, and its longstanding international presence in the healthcare sector. The plaintiff also relied on its domain names, including www.mayoclinic.org, www.mayo.edu and www.mayoclinic.com, and contended that “MAYO” was its house mark.
On the other hand, the defendants asserted that they had been using the mark “MAYO” since 1995 for healthcare services and since 2011-2012 for medical education. They claimed that they had built goodwill and recognition in their operating region through continuous use of the mark. The defendants further argued that “MAYO” was neither an invented nor an inherently distinctive expression, and they provided examples of third-party use to contend that the term could not be solely associated with the plaintiff.
The defendants also argued that there was no real likelihood of confusion between the parties’ services, given their geographical and operational differences. They also contended that their institutions catered primarily to patients from small towns in eastern Uttar Pradesh who, according to them, were unlikely to associate their services with the plaintiff. In addition, they raised the defences of delay and acquiescence, submitting that the plaintiff became aware of their use of the mark in 2014 but did not institute proceedings until 2022. According to the defendants, the delay disentitled the plaintiff from obtaining injunctive relief. They also challenged the territorial jurisdiction of the Delhi High Court.
The plaintiff argued that its registrations gave it exclusive rights under the Trade Marks Act, 1999. It pointed to information on the defendants’ websites that mentioned Dr William Mayo and the Mayo Clinic, suggesting they were aware of the plaintiff and its work when choosing the mark. It also argued that, before the Nice Classification was made applicable, the closest available class for its healthcare-related publications and material was Class 16, and that medical journals and printed matter were allied and cognate to healthcare and medical education services.
A key issue before the Court was whether the defendants could avoid an infringement action based on prior use, despite the plaintiff’s earlier trademark registrations. The Court observed that the marks “MAYO” and “MAYO CLINIC” had been registered in favour of the plaintiff in 1992, whereas the defendants had admittedly started use of the mark “MAYO” only in 1995. The plaintiff further argued that the defendants’ own website material showed that they had drawn inspiration from Dr William Mayo of Mayo Clinic, USA. The Court also noted that the plaintiff had secured registration of “MAYO CLINIC” in Class 41 for educational services in 2008, while the defendants began educational activities under the mark only in 2011-2012. This was important because the defendants’ educational use began only after the plaintiff’s Class 41 registration.
The Court held that the plaintiff’s registrations entitled it to protection granted under Section 28 of the Trade Marks Act. Referring to Section 31, the Court restated that registration constitutes prima facie evidence of validity and that a registered proprietor is entitled to seek relief against infringement so long as the registration remains valid and subsisting. The Court relied on the principle that, at the interlocutory stage, registration itself is prima facie evidence of validity unless it is removed or successfully challenged. The Court emphasised that infringement under Section 29 is based on registration rather than on the commercial use of the registered mark. Any challenge based on non-use must be pursued through removal proceedings under Section 47 of the Act and, by itself, cannot defeat an infringement claim. The Court noted that no application under Section 47 had been filed by the defendants to remove the plaintiff’s registrations.
The Court further observed that the defendants were using the identical mark “MAYO” in relation to healthcare and educational services that were either identical or closely connected to the services covered by the plaintiff’s registrations. Consequently, the dispute fell within the scope of Section 29(2)(c) read with Section 29(3) of the Trademarks Act, under which a presumption of likelihood of confusion arises where identical marks are used for identical goods or services. The Court further observed that even if the services were not treated as identical, they were at least similar, which would make out a prima facie case under Section 29(2)(b).
While considering the circumstances surrounding the adoption of the mark, the Court also took note of the material relied upon by the plaintiff regarding references on the defendants’ websites to Dr William Mayo and the Mayo Clinic. The Court observed that these materials were relevant in assessing the defendants’ awareness of the plaintiff’s mark at the time of adoption.
On the issue of acquiescence, the Court rejected the defendants’ defence. It held that Section 33 of the Trademarks Act applies only to cases involving the defendant’s registered trademark, which was not the case here. The Court further observed that the plaintiff had issued a cease-and-desist notice to the defendants in 2014. The Court observed that once the defendants had been put on notice, their continued use of the MAYO mark was at their own risk. In these circumstances, continued use of the mark thereafter could not be treated as having occurred with the plaintiff’s consent or acquiescence.
The Single Judge had held that the adoption of the mark was dishonest because the defendants’ website material referred to inspiration from Dr William Mayo of Mayo Clinic, USA, and also recorded that the founder had studied and worked in the United States before returning to India. The Division Bench did not interfere with this reasoning while upholding the injunction on infringement.
The Court also considered whether the defendants could seek protection under Section 34 of the Trade Marks Act, which preserves the rights of certain prior users. It held that Section 34 would apply only where the defendant’s use predates both the registration and use of the plaintiff’s mark. Since the plaintiff’s registrations dated back to 1992 and the defendants admitted use began only in 1995, the statutory defence was unavailable. The Court also observed that the defendant’s 1992 registrations had been obtained when Classes 41 and 44 were not available, and Class 16 was the closest available class for the relevant material. The Court clarified that mere priority of use, by itself, is not a defence to infringement unless the requirements of Section 34 are satisfied.
Having found a prima facie case of infringement, the Court upheld the injunction granted by the Single Judge and dismissed the appeal. The injunction restrained the defendants from using the mark “MAYO” or any deceptively similar variant, as well as the relevant domain names and online listings, in relation to their healthcare and educational services. This decision is important because it explains how trademark registration and prior use relate in infringement cases. It confirms that a valid and subsisting registration provides strong legal protection to the registered proprietor, and any challenge based on non-use must follow the procedures set out under Section 47 of the Trademarks Act. The judgment also makes clear the limits of acquiescence and prior-user defences, and stresses the requirement for thorough trademark checks and due diligence before choosing a mark, primarily in fields such as healthcare and medical education where reputation and public trust matter.
Authors: Manisha Singh and Kratika Patel