Very Brief Facts:
Duroply Industries (formerly Sarda Plywood) has used the trademark "DURO" since 1964 for plywood products. They discovered Ma Mansa Enterprises using the mark "DURO TOUCH" for similar goods and filed a suit alleging trademark infringement and passing off.
Dispute
The core dispute is whether the defendant’s mark "DURO TOUCH" infringes on Duroply’s rights over the “DURO” family of marks and whether the use constitutes passing off, despite the defendant having registered "DURO TOUCH" and using it since 2006.
Discussion by Judge
The Court acknowledged that both parties had registered marks and long-standing use. However, it emphasized that Duroply had been using “DURO” since 1964, giving it superior common law rights. The Judge cited multiple Supreme Court rulings on the superiority of prior user rights over registered rights and upheld that passing off remedies are not defeated by disclaimers or registration alone. The term “DURO,” while arguably descriptive, had acquired a secondary meaning due to long use by the plaintiff. The Court found that the defendant’s mark could cause confusion and was deceptively similar.
Decision
The Court granted an interim injunction restraining the defendant from using "DURO TOUCH" or any deceptively similar mark for plywood-related goods. The matter is to proceed to trial for final adjudicatio
