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Introduction:This case pertains to a dispute over trademark rights in the plywood industry, involving the plaintiffs, Duroply Industries Limited and its sister concern, and the defendant, Ma Mansa Enterprises Private Limited. The matter centers on the alleged infringement and passing off of the plaintiffs’ long-established trademarks containing the prefix “DURO” by the defendant’s use of the mark “DURO TOUCH.” The case raises pertinent issues about the rights of prior users versus registered proprietors, the doctrine of passing off, and the extent to which a generic or descriptive word can be protected if it has acquired distinctiveness through use.
Factual Background:Duroply Industries Limited, formerly known as Sarda Plywood Industries Ltd., has been engaged in the business of manufacturing and selling plywood and related products since its incorporation in 1957. It adopted the word “DURO” as part of its primary brand identity as early as 1964 and subsequently registered various marks such as “DUROPLY,” “DUROBOARD,” “DUROMAC,” and others. The plaintiffs have continuously used the “DURO” brand in the market and claimed to have developed substantial goodwill and reputation associated with these trademarks.
In 2018, the plaintiffs discovered that Ma Mansa Enterprises was using and had obtained registration for the mark “DURO TOUCH” in respect of similar products, including plywood and teak ply. A cease and desist letter was issued by the plaintiffs, but the defendant responded asserting its own use of the mark since 2006 and claimed independent goodwill in certain northern Indian markets. This prompted the plaintiffs to initiate legal action.
Procedural Background:The plaintiffs filed a suit before the Calcutta High Court seeking a permanent injunction to restrain the defendant from using the mark “DURO TOUCH” or any other mark deceptively similar to the “DURO” family of marks. Alongside the suit, an interlocutory application for interim injunction was also filed under IA No. GA/1/2020 in IP-COM/3/2024. The defendant contested the application by filing an affidavit-in-opposition and raising multiple legal and factual contentions. The interim application was heard and disposed of by order dated 25th June, 2025.
Legal Issue:The primary legal issue was whether the plaintiffs, as prior users of the mark “DURO,” were entitled to an injunction against the defendant’s use of the registered mark “DURO TOUCH” on the grounds of trademark infringement and passing off, despite the defendant's registration and long use since 2006.
Discussion on Judgments:The plaintiffs relied heavily on the doctrine of prior use and common law rights of passing off. They referred to S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, where the Supreme Court held that rights of a prior user are superior to those of a registered proprietor, and that common law remedies for passing off remain unaffected by the registration of a trademark. The case also highlighted that statutory registration does not extinguish pre-existing rights acquired through use.
In Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., (2016) 2 SCC 672, the Supreme Court clarified the first-user principle and the operation of Section 34 of the Trade Marks Act, 1999. The Court emphasized that registration does not confer exclusive rights over a mark if another party has been using it continuously prior to the registrant.
The plaintiffs also cited Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors., (2022) 5 SCC 1, where infringement was established based on the deceptive similarity of marks even when one was a word mark and the other a label mark. The decision underscored the importance of visual and phonetic similarity in evaluating infringement.
To reinforce the rights under passing off despite disclaimer clauses, the plaintiffs relied on Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257 and Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558, both of which held that disclaimers in registration do not bar common law passing off actions.
Other authorities cited include Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, both elaborating on distinctions between infringement and passing off, and stressing that phonetic and visual similarities could lead to consumer confusion.
In opposition, the defendant cited Ultratech Cement Ltd. v. Dalmia Cement, (2016) SCC OnLine Bom 3574, and Soothe Healthcare v. Dabur India Ltd., (2022) SCC OnLine Del 645, to argue that “DURO” was descriptive and common to the trade. The defendant also relied on Pidilite Industries Ltd. v. Vilas Nemichand Jain, (2015) SCC OnLine Bom 4801, arguing that the plaintiffs failed to prove that the descriptive mark had acquired distinctiveness.
Reasoning and Analysis of the Judge:Court conducted an extensive analysis of the statutory framework under Sections 27, 28, and 34 of the Trade Marks Act, 1999, read alongside common law principles of passing off. The Court noted that the plaintiffs were established prior users of the “DURO” mark and had used it continuously since 1964, which created undeniable goodwill and reputation.
While acknowledging that the defendant was a registered proprietor of “DURO TOUCH” and had used it since 2006, the Court held that the prior use by the plaintiffs gave them superior rights. The Judge emphasized that registration is not an absolute defense, and that long-standing use that builds goodwill entitles a trader to protection under passing off.
The Court accepted that the use of “DURO” by the plaintiffs had acquired a secondary meaning and that the general public could associate the defendant’s mark “DURO TOUCH” with the plaintiffs’ goods, especially given the similarity in the products and the phonetic structure of the marks.
The defendant’s arguments on delay, estoppel, and acquiescence were rejected. The Court reiterated that every act of passing off is a continuing tort and that delay alone cannot defeat the right to relief. The argument about the descriptive nature of the word “DURO” was countered by showing that distinctiveness can evolve over time through usage.
The Court concluded that there was a prima facie case of passing off and potential trademark infringement, and that the balance of convenience lay in favour of the plaintiffs. Allowing the defendant to continue would likely result in irreparable harm to the plaintiffs’ goodwill.
Final Decision:The Court allowed the interim application and passed an injunction restraining the defendants, their agents, and associates from using the marks “DURO TOUCH,” “DURO,” or any other deceptively similar mark to the plaintiffs’ registered “DURO” family of trademarks, in relation to plywood and similar goods, until further orders. The Court clarified that these observations were tentative and would not affect the final adjudication of the suit on evidence.
Law Settled in This Case:This case reinforces the principle that prior user rights in trademarks are superior to registration under the Trade Marks Act, 1999. It affirms that common law rights of passing off exist independently of statutory rights and can override registration where deceptive similarity and misrepresentation are shown. The case also reaffirms that descriptive or generic marks, through continuous and extensive use, may acquire distinctiveness and be protected against infringement and passing off. Delay in initiating proceedings does not negate the right to injunctive relief if misrepresentation and likelihood of confusion are established. The ruling underscores that trademark law prioritizes the protection of goodwill and consumer association built through sustained commercial use.
Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited:Date of Order: 25th June, 2025:Case Number: IP-COM/3/2024:High Court at Calcutta:Name of Judge: Hon’ble Justice Sugato Majumdar
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
