Breaking down the DHC DB decision in Bodhisattva Charitable Trust And Ors v Mayo Foundation for Medical Education and Research, on prior use and registration of a trademark, Srishti Gaur explains where the order falters with regard to assessing the three factors of interim injunction. Srishti is a third-year student at National Law University, Delhi. Her previous posts can be accessed here.
Bodhisattva v. Mayo: The DHC’s take on Trademark Infringement and the Missing Injunction Tests
By Srishti Gaur
On 28 July 2025, the Delhi High Court Division Bench, comprising Justices Hari Shankar and Om Prakash Shukla, delivered its decision in Bodhisattva Charitable Trust And Ors v Mayo Foundation for Medical Education and Research, upholding the Single Judge’s findings in this dispute over the mark “MAYO”.
The core of the case revolved over the mark “MAYO”, which the respondent, MAYO Clinic, claimed that they have registered in 1992 and the appellant had been using their mark since 1995 without any authorization. The Court navigated through the rocky terrain of trademark law and addressed questions of validity, prior use, and non-use and upon consideration, established a prima facie case of infringement. The Court concluded that the MAYO Clinic’s prior registration trumped over the appellant’s (not-so-accurate) claim of prior use.
The judgment, however, was not without its own set of flaws – it faltered when it came to the three-pronged test for interim injunction, leaving the other two factors unexamined. The blog post unpacks the judgment and analyses the approach adopted by the Court to each of the issues and where its reasoning fell short.
What Triggered the Case?
The internationally known US-based Medical Centre, Mayo Clinic, registered the marks “MAYO” and “MAYO CLINIC” as their trademarks in India in 1992 under Class 16, which dealt with medical journals and printed material, and later, in 2008, under the expanded list of categories – Class 41, educational services, and Class 44, medical and healthcare services.
The appellants, Bodhisattva Charitable Trust and others (henceforth “Bodhisattva”), operated institutions under the name of Mayo Medical Centre, Mayo Hospital, Mayo Institute of Medical Sciences, and Mayo School of Nursing, providing educational and health services without having had registered their trademark. The Mayo Clinic objected to the use of “MAYO” in appellant’s institutions and argued that Bodhisattva’s usage can create consumer confusion, considering their health services, provided through its website, have received widespread exposure and acceptance in India. The Single Judge granted an interim injunction in the favour of MAYO Clinic which subsequently prompted Bodhisattva to file an appeal before the Division Bench.
Arguments and Analysis
- Non-use and Section 47
Section 47(1)(b) of the Trade Marks Act, 1999 allows a trademark to be cancelled on an application by the aggrieved person if the trademark has not been in use for a continuous period of 5 years and 3 months prior to the filing.
In Hardie Trading Ltd v Addisons Paint & Chemicals Ltd, the Supreme Court laid down a three-prong test of cancellation for non-use (para 26) (more can be read here):
- the application is to be made by a “person aggrieved”
- the trademark should not be in use by the proprietor for a period of at least five years and one month prior to the date of application.
- there were no special circumstances which affected the use of the trademark during this period by the proprietor
Bodhisattva argued that despite having registrations for the mark in 1992, the MAYO Clinic did not use it for 30 years till 2022. Bodhisattva further claimed that it, on the other hand, have been continuously using the mark since 1995.
To answer this, the Court first observed that in 1992, apart from Class 16, there were no other proximate Class under which the mark could have been registered (para 26.1). Following the cases of Renaissance Hotel Holdings v V. Vijaya Sahi, the Court held that the MAYO Clinic had validly registered its trademark and the act of registration is sufficient to establish prima facie validity of a mark (Section 31(1)).
As for the argument that the MAYO Clinic did not use the mark despite its registration, the Court noted that it did not “make any substantial difference”. Section 28(1) provides the registrant an exclusive right of use over the mark and also right to relief in case of infringement – now whether the mark is in use or not in irrelevant. Moreover, Bodhisattva did not move any such application under Section 47 (para 27.4). Since no such application was made, the requirements of non-use have not been fulfilled, thereby, the Court rejected non-use as a valid defence. A similar view was adopted by the DHC in Kamal Raheja v Hahnemann Pure Drug Co where it held that the trade mark cannot be suo moto removed from the Register but for an application from the aggrieved party.
- Infringement and Section 29
Section 29(2) of the Trade Marks Act deals with infringement of a registered trademark in any of the three situations enumerated in clauses (a), (b), and (c). Clause (a) encompasses the situation when both marks are identical and the goods/ services are similar; clause (b) includes a situation when both marks are similar and even the goods or services are identical or similar and last, clause (c) is when both the marks are identical and goods or services provided are identical. Eashan Ghosh notes that to prove infringement under Section 29(2), an “activity-comparison-effect” chain needs to be satisfied.
In JSB Cement LLP v Assam Roofing and Others, a two-tier test was laid to check for infringement of a registered mark (para 43):
- To check whether the marks and goods or services are identical or similar.
- Once the first step is met, the second step questions whether the similarity/identicality causes confusion or an association with the registered mark. This step is presumed by law under Section 29(3).
It is to be noted that Bodhisattva and others were using the MAYO mark for providing services in areas though not identical but rather similar as that of MAYO Clinic. This would lead to a sense of confusion to the public – the Court, given the previously established validity of the mark, made out a prima facie case of infringement under Section 29(2)(b) of the Trade Marks Act.
Section 34 of the Trade Marks Act limits the rights available to the owner of a registered mark under Section 28 in favour of a prior user. To qualify as a prior user, the user has to predate both (i) the first use of the registered mark, and (ii) the date of the registration of the mark. The Supreme Court in S. Syed Mohideen v P. Sulochana Bai held that the rights of the prior user takes precedence to that of the registered user with respect to common law rights. Due to this, a registered trade mark cannot interfere with the rights of a prior user even though it was not registered.
Bodhisattva put forth the argument that it enjoyed priority of use over the mark “MAYO” since MAYO Clinic did not register its marks in 1992 for goods or services which were allied or cognate and Bodhisattva has been in use from 1995. The first part of the argument was rightly dismissed earlier in the judgment that MAYO Clinic validly registered the marks “MAYO” and “MAYO CLINIC” in 1992. Since the trade mark was registered in 1992 and Bodhisattva has been a user of it only from 1995, the court rightly came to the conclusion that MAYO Clinic is the “first user” of the mark and not Bodhisattva, making it neither a prior user nor a prior registered mark (para 30.1).
The Unaddressed Prongs of the Injunction Test
Though the court correctly assessed these aspects and explained at lengths how a prima facie case is established, it still failed to consider the other two factors required to grant an injunction to the aggrieved – (i) whether balance of convenience rests with MAYO Clinic, and (ii) whether the continued use of the mark by Bodhisattva results in irreparable harm to MAYO Clinic. This is not an isolated instance but rather courts have routinely overlooked the necessity to expound over the other two factors (here and here).
The other two factors have substantial weight in turning the decision of courts – in an interesting instance, the Delhi High Court in Birla Institute Of Technology and Science, Pilani vs Maa Bhagwati Educational Society and Anr. noted that the defendant was an educational institution, running since 2012, involved in the welfare of students, and considering the significance it holds, the defendant was not injuncted. That said, while the role of public interest in trademark infringement disputes is unclear – whether the nature of business impacts the decision is not an established position (more can be read here). However, all I want to point out is that since Bodhisattva provided health and educational services, this consideration had the potential to alter the Court’s approach in the present case but the Division Bench never went exploring that line of reasoning.
Interim injunctions are exceptional remedies and are to be granted in an event when all three elements are convincingly demonstrated – neglecting the two dilutes the threshold for such relief, converting it into an automatic entitlement upon a mere showing of prima facie merit. While the Court took the right approach in establishing a prima facie case, it erred in maintaining a balance between protecting proprietor’s rights and preventing overreach.