WHETHER PRIOR USAGE AND REGISTRATION OF THE MARK SHOULD BE GIVEN DUE RECOGNITION AND PROTECTION?

Summary of the facts:

The plaintiff is a subsidiary of “MAYO” Clinic, a well-known charitable organization based in the United States. They operate internationally and have a strong reputation under the mark “MAYO” for providing medical care, research, education, and diagnostic services. The plaintiff holds trademarks for “MAYO” and related marks in India and over 85 other countries.

The defendants, in this case, include Bodhisatva Charitable Trust, “MAYO” Medical Centre Private Limited, “MAYO” Medical Centre, “MAYO” Institute of Medical Sciences, “MAYO” School of Nursing, and “MAYO” Hospital. The plaintiff alleges that the defendants have dishonestly adopted the trademark “MAYO” and are using it in their names, websites, display boards, and promotional materials related to healthcare and medical education.

The plaintiff had previously issued a legal notice and engaged in pre-litigation mediation, but the matter remained unresolved. They filed a suit seeking a permanent injunction against the defendants for trademark infringement, passing off, and other related reliefs to protect their brand and reputation.

Issues:

1. Whether there was an infringement of the plaintiff’s trademark “MAYO”?
2. Whether a permanent injunction can be ordered against the defendants if the infringement is found to be true?

Arguments Advanced:

The plaintiff argues that the defendants’ claim that the mark “MAYO” is not well-known in India is unfounded. They contend that the mark “MAYO” has acquired a reputation and goodwill in the healthcare and medical education sector in India, and the defendants’ usage of the mark is likely to cause confusion among the relevant section of the public. The plaintiff relies on the Supreme Court judgment in MilmetOftho Industries and Ors. v. Allergan Inc., which establishes that in the healthcare field, the test for trademark usage is based on who was the first user of the mark worldwide. Therefore, the plaintiff asserts that their prior usage and registration of the mark “MAYO” should be given due recognition and protection.

The plaintiff counters the defendants’ argument regarding territorial jurisdiction, stating that the defendants’ websites being accessible in Delhi establishes the territorial jurisdiction of the court. They argue that the defendants’ interactive websites, which allow customers to make appointments and book health check-ups, including from Delhi, as well as their empanelment by organizations in Delhi, demonstrate their services being offered in the jurisdiction of the court.

The plaintiff rejects the defendants’ claim that “MAYO” is a common name in India and argues that in the context of healthcare services, the mark “MAYO” is arbitrary and distinctive. They refer to the defendants’ own application for registration of the mark MAYO Institute of Medical Sciences as evidence contradicting the defendants’ assertion that “MAYO” is a common name.

The plaintiff disputes the defendants’ interpretation of the judgments in Milmet and Prius. They argue that the judgment in Milmet is applicable to healthcare and medicine, which includes hospitals, and that Prius, which pertains to automotive spare parts, does not overrule or supersede the judgment in Milmet. The plaintiff maintains that the adoption of the mark ‘“MAYO”’ by the defendants for healthcare services constitutes an infringement of the plaintiff’s registered trademarks.

In response to the defendant’s argument that delay, laches, and acquiescence bar the reliefs sought by the plaintiff, the plaintiff cites the case of Midas, where the Supreme Court held that delay alone is not sufficient to deny the grant of injunction in cases of trademark infringement if the adoption of the mark was dishonest. They also refer to the Hindustan Pencils case, which states that even with an inordinate delay, if the defendant acts fraudulently with knowledge of violating the plaintiff’s rights, the relief of injunction should not be denied. The plaintiff argues that their timely action against the defendants’ infringement and the defendants’ dishonest adoption of the mark “MAYO” negate the defense of delay, laches, and acquiescence.

The plaintiff reiterates that the proposed addition of the prefix ‘Dr. Kailash Narayan’ by the defendants does not resolve the issue of infringement and confusion. They argue that it may even increase the likelihood of confusion and convey the impression of a joint venture between the plaintiff and the defendants.

These arguments aim to counter the defendants’ claims and establish the plaintiff’s rights, reputation, and goodwill in the mark “MAYO” in the healthcare and medical education sector in India, as well as the defendants’ infringement and dishonest adoption of the mark. The plaintiff also challenges the defendants’ defenses of lack of well-known status, territorial jurisdiction, delay, laches, and acquiescence.

Decision:

After careful consideration, the court determined that there was sufficient evidence to support the plaintiff’s claim of infringement and passing off. Taking into account the overall circumstances, the court found that it is more favorable to grant an interim injunction in favor of the plaintiff. This injunction prohibits the defendants from using the plaintiff’s trademark or any similar mark, including specific names and domain names, until the final resolution of the lawsuit. It is important to note that these remarks are applicable only to the current application and will not influence the ultimate outcome of the case.