Bijur Lubricating v. Devco

Citation: Bijur Lubricating Corp. v. Devco Corp., 332 F.Supp.2d 722 (D.N.J. 2004)(full-text).

Factual Background
Plaintiff made and sold lubricating systems and replacement parts for those systems under the mark BIJUR. Defendant, founded by a former employee of plaintiff, competed in the sale of lubricating parts.

Trial Court Proceedings
Plaintiff alleged that defendant infringed and diluted its trademarks by using the BIJUR mark on defendant’s “devocorp.com” website to promote and sell third-party replacement parts for plaintiff’s systems.

First, defendant used the BIJUR mark in various metatags (e.g., “bijur,” “NJ bijur,” “NY bijur,” “bijur replacement lubrication parts by Devco”). Plaintiff introduced evidence that online searches of the terms “bijur” or “bijur.com” returned results including a hit entitled “bijur replacement lubrication parts by Devco.” Users who clicked on that result were linked to a page at defendant’s website(http://www.devcocorp.com/bijur.html) with “Bijur Replacement Parts” displayed near the top of the page. This web page provided contact information for defendant and stated that defendant sold original equipment and replacement parts for various manufacturers, including plaintiff.

Second, defendant used the text “Replaces Bijur” in tabular lists of available parts. The lists contained a column for the “DEVCO” model number and a column for the corresponding Bijur model number captioned “Replaces Bijur.” These lists did not indicate that the “Replaces Bijur” parts were actually manufactured by a third party. The parties stipulated to a preliminary injunction in late 2000 preventing defendant from using “Bijur Replacements” or “Bijur Replacement Parts” on its website and from using certain “Bijur” metatags.

This decision addressed defendant’s motion for summary judgment on plaintiff’s claims of trademark infringement, dilution, and unjust enrichment. Regarding infringement, the court determined that defendant’s use of the BIJUR mark did not cause a likelihood of confusionand granted summary judgment in defendant’s favor. Although many of the likelihood-of-confusion factors favored plaintiff, the court expected that the commercial purchasers for the parties’ products would possess the sophistication to discern which products they were seeking. Moreover, defendant had the right to inform potential purchasers that its non-Bijur-manufactured parts replaced Bijur parts. And there was nothing in the record showing that defendant intended to do anything but that. There was nothing “inherently misleading” about use of “Replaces Bijur” to identify the Bijur model number defendant’s parts replaced or use of “Bijur Replacement Parts” to announce on its website that it sold products by various manufacturers and that it sold both original equipment and replacement parts.

Nor did defendant use BIJUR in its metatags with the intent to confuse the public. Although the court acknowledged that initial-interest confusion can be created by the use of another’s mark in metatags under certain circumstances, defendant here was permitted to use plaintiff’s BIJUR mark in its metatags “to inform customers through its website that it sells replacements for Bijur parts.” Even if the BIJUR metatags caused defendant’s website to be included in the search results for the term “bijur,” the link titled “bijur replacement lubrication parts by Devco” informed potential customers that the replacement parts were “by Devco,” thus “implying that they were not manufactured by Bijur.”

The court also granted summary judgment on plaintiff’s federal and New Jersey dilution claims, finding defendant’s use of BIJUR to be permissible nominative fair uses because: (1) defendant could not identify Bijur replacement parts without using the BIJUR mark, (2) defendant did not use any stylized versions of the BIJUR mark, and (3) as noted above nothing on defendant’s website or in its metatags suggested an affiliation between the parties. Finally, because defendant’s use of plaintiff’s mark was lawful, the court also granted summary judgment on plaintiff’s claim of unjust enrichment.

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