'Deceptive Similarity': Delhi HC Awards ₹12 Lakhs To Castrol In Trademark Infringement Suit Against 'Newcast Roi Racing' Engine Oil Manufacturer

The Delhi High Court has awarded Rs. 12 lakhs as costs and damages to Castrol Limited while decreeing its suit against two individuals manufacturing engine oil products under the mark “Newcast Roi Racing.”

Justice Sanjeev Narula said that although the defendants' mark may seemingly appear distinct from Castrol, it was strategically presented in a manner that creates a deceptive similarity to the latter's registered trademark.

The court said that it was a peculiar trademark dispute where the defendants, Rajesh Kumar Tuteja and Seema Tuteja, despite holding a valid registration for the mark "newcast roi racing," were engaged in deceptive practices that “undermine the integrity of trademark law.”

“By strategically altering the typography—diminishing the prominence of "new" and unduly accentuating "Castroi," with "Racing" positioned less conspicuously—the Defendants have muddled the distinction between the Plaintiff's renowned "Castrol" mark and their mark "Castroi," both of which are utilized for identical goods i.e., engine oil and lubricants,” the court said.

It added that the manipulation not only illustrated a clear intent to deceive but also infringed upon Castrol's established trademark rights in the trademark “Castrol”.

“Defendants have engaged in a calculated manipulation of their trademark's presentation, employing a strategic alteration of typography to closely mirror the Plaintiff's established "CASTROL" mark,” the court said.

It added that by diminishing the prominence of the word "new" and disproportionately emphasizing "cast roi" with "racing" relegated to a less prominent position, Tutejas significantly obscured the distinction between the well-recognized "CASTROL" mark and their own mark "Castroi," despite both being used for identical goods.

Justice Narula said that the intentional shift in the visual representation of the marks induced confusion among consumers, eroding the clear distinction between "CASTROL"and "Castroi” marks.

“In light of the above discussion, Defendants' registration of the mark "newcast roi racing" is evidently in bad faith. This misuse is characterized by manner in which the impugned mark has been used. The essence of Defendants' actions—evident through both the registration and use of the mark—demonstrates a deliberate attempt to capitalize on the similarity between “CASTROL” and “Castroi”, the court said.

It added that Tutejas' actions, viewed holistically, suggested a pattern of behavior aimed at capitalizing on Castrol's goodwill and market position, undermining the credibility of his claim to innocent adoption and negating the purported effectiveness of the disclaimer adopted in their products.

“The Defendants' failure to provide a rationale for adopting the term “newcast roi racing” further underscores their contrived intention. This deliberate imitation, engineered to confuse consumers into associating the Defendants' products with the Plaintiff's established mark, strips away any facade of innocence. From its very inception, the Defendants' use of the impugned mark was marked by dishonestly, bad faith and a clear intent to deceive,” the court observed.

Accordingly, Justice Narula decreed the suit in favor of Castrol and said that it shall also be entitled to destroy the infringing goods seized by the Local Commissioner in accordance with law.

Counsel for Plaintiff: Mr. Urfee Roomi, Ms. Janaki Arun, Ms. Radhika Arora, Mr. Jaskarna Singh, Advocates

Counsel for Defendants: Mr. Saurabh Kumar Tuteja, Advocate

Title: CASTROL LIMITED v. RAJESH KUMAR TUTEJA, TRADING AS KRISHNA INTERNATIONAL AND ANR.

Citation: 2024 LiveLaw (Del) 192

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