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Bangalore District Court
Diversey Inc vs Kamlesh Chaudhari on 15 July, 2025
Com.OS.No.987/2022
KABC170018622022
IN THE COURT OF LXXXV ADDL. CITY CIVIL & SESSIONS
JUDGE, AT BENGALURU (CCH-86) (Commercial Court)
THIS THE 15th DAY OF JULY 2025
PRESENT:
SRI.ARJUN. S. MALLUR. B.A.L.LL.B.,
LXXXV ADDL. CITY CIVIL & SESSIONS JUDGE,
BENGALURU.
Com.OS.No.987/2022
BETWEEN:
DIVERSEY, INC.
A Company incorporated under
the laws of the State of Delaware,
U.S.A., Having its registered office
at, 1300 Altura Road, Suite 125
Forte Mill, South Carolina 29708
United States of America
Represented by its Constituted Attorney
Mr. Ritam Rawal, aged about 40 years
Working for gain at,
the Millennium Plaza, Sector 27
Gurgaon, Haryana-122009
: PLAINTIFF
(By Sri. Manu Kulakarni, Advocate.)
1
Com.OS.No.987/2022
AND
1. Mr. KAMLESH CHAUDHARI
Son of Mr. Ganesh,
Aged about 30 years
Trading/carrying on business at:
M/s Starlight Home Care
No.01, Ground Floor,
Bidarahalli Village,
Virgo Nagar Post,
Bangalore - 560049
Karnataka
Also at:
No.286, 3rd Cross,
Mottapanapalya, Indiranagar
Bangalore-560038
Karnataka
Also at:
A-T Room No.5,
Anbhar Society
Samta Nagar, Singh Estate
Kandivali East
Mumbai - 4001001, Maharashtra
2. Mr. HARDIK SEJABHAI
Trading/carrying on business as:
M/s K.C. Enterprises
339A, Ground Floor, BDA Quarters
4th A Main, II Stage 3rd Phase,
Domlur, Bengaluru Urban
Karnataka - 560071.
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Com.OS.No.987/2022
Also at:
Building No.333,
32nd E Cross Road
Tilak Nagar,
Jayanagar,
Bangalore-560041
Karnataka.
: DEFENDANTS
(By Sri. Nagaraj Hegde Advocate for Defendant No.1)
(Defendant No.2 - Exparte)
Date of Institution of the suit 12.07.2022
Nature of the suit (suit on
pronote, suit for declaration & Suit for Permanant and
Possession, Suit for injunction Mandatory Injunction and
etc.) Damages.
Date of commencement of 03.06.2025
recording of evidence
Date on which judgment was 15.07.2025
pronounced
Total Duration Year/s Month/s Day/s
03 00 03
(ARJUN. S. MALLUR)
LXXXV Addl.City Civil & Sessions Judge,
Bengaluru.
JUDGMENT
Suitby the plaintiff with respect to infringement of
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Com.OS.No.987/2022
the registered trade/service mark seeking the following
reliefs:
a. Permanent/perpetual injunction against
infringement of the plaintiff’s prior, registered and well
known trade/service marks Diversey and by restraining
the defendants, their promoters, assigns, relatives,
successors-in-interest, licensees, franchisees, partners,
representatives, servants, distributors, employees, agents
etc. and anyone associated with them, or acting under or
through them from using the marks Divercy, Divency
and/or any mark identical and/or deceptively similar to the
plaintiff’s trade/service marks Diversey and /or either
singularly or in conjunction with any other word or
monogram/logo in any manner whatsoever including that
as a trade name/trading style, domain name, email
address etc. so as to infringe the plaintiff’s said registered
trade/service marks.
b. Permanent/perpetual injunction against
infringement of the plaintiff’s copyright vesting in the
artwork by restraining the defendants, their promoters,
assigns, successors-in-interest, licensees, franchisees,
partners, directors, representatives, servants, distributors,
employees, agents etc. and anyone associated with them,
or acting under or through them, from infringing or4
Com.OS.No.987/2022causing infringement of the plaintiff’s copyright vesting
therein by exposing for sale or using the said artwork or
copying/reproducing or causing reproduction of the same
or any colourable imitation or substantial reproduction
thereof including and/or in any manner whatsoever.
(c) Permanent/perceptual injunction restraining the
defendants, their promoters, assigns, successors-in-
interest, licensees, franchisees, partners, directors,
representatives, servants, distributors, employees, agents
etc. and anyone associated with them, or acting under or
through them, from using the marks Divercy, Divency
and /or any mark identical and /or deceptively similar to
the plaintiff’s trade/service marks Diversey and /or any
other material proprietary to the plaintiff in any manner
whatsoever so as to pass off or enable others to pass off
their goods, products, services or business as that of the
plaintiff or in any way convey a connection with the
plaintiff.
(d) Mandatory injunction directing the defendants,
their their promoters, assigns, successors-in-interest,
licensees, franchisees, partners, directors,
representatives, servants, distributors, employees, agents
etc. and anyone associated with them, or acting under or
through them, to withdraw the trademark application
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Com.OS.No.987/2022
under No.5202160 for registration of the mark divency in
class 3, cancel their registration No.4385833 for the trade
mark divercy in class 3 filed secured with the trade marks
registry and restrain them from applying for and /or
obtaining registrations before any competent body or
government authority of the plaintiff’s trade/service
marks/artwork/name Diversey and or any other mark/
artwork/name deceptively similar thereto;
(e) Mandatory injunction directing the defendants,
their promoters, assigns, relatives, successors-in-interest,
licensees, franchisees, partners, representatives,
servants, distributors, employees, agents etc. and anyone
associated with them, or acting under or through them, to
deliver-up to the plaintiff for destruction their entire
products, packaging, stationery, letter heads, signage,
reprographic material, brochures, literature or any other
material bearing the marks Divercy, Divency and/or any
mark identical and/or deceptively similar to the plaintiff’s
trade/service marks Diversey.
(f) Preliminary decree for rendition of accounts
directing the defendants to produce before the Hon’ble
Court or any person nominated/designated/appointed by
this Hon’ble Court all accounts in general and invoices and
sales figures in particular pertaining to the business under
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Com.OS.No.987/2022
the marks Divercy, Divency and/or any mark identical and
/or deceptively similar to the plaintiff’s trade/service
marks Diversey.
(g) Final money decree in favour of the plaintiff and
against the defendants for payment of damages in the
sum of INR 75,00,000/- or in such higher sum as may be
determined/ascertained pursuant to the rendition of
accounts.
2. The case of the plaintiffs in brief is as under:-
The plaintiff is the registered owner and use of the
trade/service mark Diversey and the artwork by name
Diversey. The plaintiff since its inception has been
continuously using the said trade/service mark in relation
to its global business. The said trade/service mark
Diversey forms dominant part of plaintiff’s corporate
name and trading style and the plaintiff has been making
use of the same since the early part of 20 th century. To
differentiate itself from its competitors in a global market
and to support its future strategic aims the plaintiff has
adopted the unique artwork/logo Diversey in an oval
shaped form in the year 2017. The plaintiff is the first
owner of the copyright subsisting in the said artwork and
the same has been in use at least since the year 2017.
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Com.OS.No.987/2022
The plaintiff’s trade/service mark Diversey as well as its
artwork and name Diversey are its house marks. It is
submitted that the earliest registration of the mark
Diversey dates back to the year 2017 in various
jurisdiction such as USA, European Union etc., The plaintiff
is also a registered proprietor of the trade/service mark
Diversey in India and the details of the trademark
application and the class under which it is registered has
been provided in para 13 of the plaint and the trademark
as on today is in force till May 11, 2028. The certificate for
use in legal proceedings issued by the Registrar of trade
marks of the plaintiff’s registration No.1869551 and
1869552. In addition to the plaintiff’s trademark rights in
the prior, registered a well known mark Diversey the
copyright in the artwork and logo also vests in favour of
the plaintiff.
(b) The plaintiff’s anuual consolidated worldwide
sales of its product which is mainly with respect to
hygiene and cleansing products is approximately around
2.62 Billion USD. It is submitted that the plaintiff is a
global leader in high performance hygiene, infection
prevention and cleaning solutions for the institutional and
food and beverage markets and it develops and delivers8
Com.OS.No.987/2022innovative products, services and technologies that saves
lives and protect the environment. The plaintiff products
in India has been available since 1998 when the plaintiff
established a direct presence in the country with
incorporation of its wholly owned subsidiary Diversey India
Hygiene Private Limited. Since the year 2009 the plaintiff
operates India specific website www.diversey.in to provide
information about its business, product, services etc by
using the registered trade and art work by name Diversey.
The revenue generated by way of sales in India for the
year 2020 is around 456 crores.
(c) In November 2020 the plaintiff became aware of
the defendant No.1 when it came across its registration
under No.4385833 for the trade mark Pabu Divercy in
class 3 for bleaching preparations and other substances
for laundry use, cleaning, polishing, scouring and abrasive
preparations, soaps, perfumery, essential oils, cosmetics,
hair lotions and dentifrices. Upon coming to know about it
the plaintiff through its counsel addressed a cease and
desist notice dated 20.11.2020 calling upon the defendant
No.1 to cancel its registration No.4385833 and cease all
objectionable use. On 14.12.2020 the plaintiff received a
letter from the counsel for defendant No.1 making
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Com.OS.No.987/2022
baseless allegations justifying the defendants adoption
and use of the mark Pabu Divercy. As the defendant No.1
refuse to comply with the cease and desist notice the
plaintiff in order to safeguard its statutory and proprietary
rights vested significantly in its prior registered well
known trade/service mark and artwork Diversey applied
for cancellation of the defendant No.1’s registration of the
mark Pabu Divercy under No.4385833 before the office of
trademarks Registry Chennai on 02.02.2021. Upon service
of the copy of the application for cancellation of the mark
on the defendant the defendant had not filed any counter
statement and therefore the plaintiff was under the
bonafide impression that the defendant No.1 has given up
the use of objectionable trademark. However upon
making search in the internet it revealed defendant No.1
continuously using the objectionable mark Pabu Divercy
and the plaintiff also came to that the defendant No.2 was
dealing with the plaintiff products. The plaintiff conducted
further investigation into the business activities of
defendants in November 2021 which revealed that the
defendant No.1 had ceased use of the mark Pabu Divercy
and defendant No.2 who was the distributor of defendant
No.1 did not possess any significant stock of the product
under the mark Pabu Divercy. The website of defendant
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Com.OS.No.987/2022
No.2 www.pabudivercy.com was also not in operation and
the domain name www.pabudivercy.com was open for
registration. The plaintiff came to believe that the
defendants were in the process of winding up the
operations under the objectionable mark and were in the
process of exhausting stocks. However on 27.01.2022 the
defendant No.1 filed a counter statement to the plaintiff’s
application for cancellation of the registered trademark of
defendant No.1. Thereafter the plaintiff has produced
evidence before the trademark registry and the
proceedings are pending adjudication before the
trademark registry.
(d) Further the online record of trademark registry it
revealed that the defendant No.1 also had filed an
application under No.5202160 on 08.11.2021 for
registration of another mark Reyes Divency in class 3 by
making yet another attempt to infringe upon the plaintiff’s
registered trademark and art mark Diversey. The
applications filed by defendant No.1 before the registry of
trademarks is establishing its misconduct of adopting
deceptively similar mark of the registered trademark
owned by the Diversey. The defendants have expressed
their intention to not only continue the use of
objectionable trademark but also trade upon the goodwill
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Com.OS.No.987/2022
and reputation earned by the plaintiff by use of its
registered trade and art mark Diversey. The defendants by
making use of objectionable trademark which is
phonetically, deceptively similar to that of the plaintiff’s
registered trademark is trying to derive unjust pecuniary
benefits at the expense of plaintiff. The act of the
defendants has resulted in infringement of the plaintiff’s
registered trade/service mark Diversey, the copyright
subsisting in the artwork Diversey and passing of at
common law violating the goodwill and reputation earned
and enjoyed by the plaintiff and diluting the
distinctiveness of the plaintiff’s registered trade and
service mark, its value, goodwill and reputation and also
resulting in pecuniary loss to the plaintiff. It is submitted
that the defendants continuous use of objectionable
trademark has resulted in enormous financial loss to the
plaintiff and even though the loss sustained cannot be
measured the plaintiff has restricted its claim for damages
at Rs.75,00,000/- of which Rs.25,00,000/- towards
infringement of trade/service mark Diversey,
Rs.25,00,000/- towards infringement of the copyright, the
artwork Diversey and Rs.25,00,000/- towards passing of.
Hence the suit.
12
Com.OS.No.987/2022
3. On service of summons defendant No.1 appeared and
filed written statement denying the plaint averments in
toto. The defendant No.1 contended that it is the sole
proprietor running the business in the name and style
Starlight Home Care and commenced the business in the
year 2019 and the Registrar of trademarks Government of
India has issued a trademark registration certificate in
favour of defendant No.1 to sell its products in the name
and style of Pabu Divercy as per the certificate dated
21.12.2019. It is submitted that as on the date of
commencement of business the defendant No.1 faced the
threat of Covid-19 pandemic and on account of the lock
down the defendant No.1 had stopped the business within
one year from the date of its commencement and even
now as on the date of filing the written statement the
business had not yet commenced. It is submitted that the
registered trademark given to the defendant No.1 Pabu
Divercy is no where similar to that of the plaintiff’s
registered trademark Diversey and that the defendant
No.1 has not received any disputes with regard to its
registered trademark being phonetically, similarly,
identically and deceptively similar to the nature of the
trademark of the plaintiff. It is submitted that the plaintiff
has filed this suit only with an intention to make a
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Com.OS.No.987/2022
wrongful gain knowing fully well that the registered
trademark in favour of defendant No.1 is totally different
from that of the trademark registered in favour of the
plaintiff and there is absolutely no similarity in whatsoever
and therefore there is no infringement of either the
copyright in the artwork or trade/service mark of the
plaintiff. The defendant makes a complete denial of the
plaint averments and contends that the registered
trademark and the logo used by defendant No.1 is
completely different to that of the plaintiff’s registered
trademark and logo and there is absolutely no similarity
between them. It is submitted that the name of the
trademark of defendant No.1 Pabu Divercy whereas that
of the plaintiff’s is only Diversey, the title colour is blue
filled text whereas of the plaintiff’s it is white filled text.
The logo though it is of oval design the colour of logo of
defendant No.1 is solid yellow whereas that of the
plaintiff’s is blue, the font used by both though regular
font the alphabets in the logo of the defendant No.1 is 11
where as of the plaintiff is 8 and in the said logo the
posture of the bird looks like flying away in the defendant
No.1 logo but that of the plaintiff it looks like landing and
in the defendant No.1 logo the type of the bird is eagle
whereas that of the plaintiff it is an outline sketch of a
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Com.OS.No.987/2022
small bird. It is contended that these differences makes its
manifestly clear that no where the registered trademark of
the defendant Pabu Divercy is similar in any manner to
that of the registered trademark of the plaintiff Diversey
and that no infringement whatsoever as alleged has been
committed by defendant No.1. The defendant No.1 has
denied all other plaint averments and sought for dismissal
of the suit with exemplary costs.
4. On service of summons the defendant No.2 remained
absent and has been placed exparte.
5. On the basis of the above pleadings the following
issues and additional issues have been framed:
ISSUES
1. Whether the plaintiff proves that the
defendant indulged in infringement
of trademark and copyright of the
plaintiff by making use of a
deceptively similar and phonetically
similar trademark, copyright and
logo?
2. Whether the plaintiff proves that the
defendant is liable to pay damages
to the extent of Rs.75,00,000/- with
respect to infringement of
trademark and copyright of the
plaintiff by making use of a15
Com.OS.No.987/2022deceptively similar and phonetically
similar trademark, copyright and
logo resulting in unjust enrichment?
3. Whether the plaintiff is entitled for
the reliefs of permanent / perpetual
injunction and mandatory injunction,
as prayed?
4. Whether the plaintiff is entitled for
the damages, as prayed?
5. What order or decree?
6. The authorized representative of the plaintiff has
examined himself as P.W.1 and got marked documents at
Ex.P.1 to P.43. The defendant No.1 neither cross-examined
the plaintiff witness nor has led any evidence on his
behalf.
7. Heard the learned counsel appearing for the plaintiff.
Memo with citations are filed. Perused the entire material
on record.
8. My answer to the above issues are as under:-
Issue No.1 : In the Affirmative.
Issue No.2 : In the Affirmative.
Issue No.3 : In the Affirmative.
Issue No.4 : In the Affirmative.
Issue No.5 : As per final order for the
following.
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Com.OS.No.987/2022
REASONS
9. ISSUE Nos.1 and 2: These issues are interlinked with
each other and to avoid repetition of facts and evidence
they are taken up together for answering.
The authorized representative of the plaintiff has
filed his affidavit by way of evidence reiterating the
averments made in the plaint. He has got marked
documents at Ex.P.1 to P.43. Ex.P.1 are the series of
registration certificates with respect to registration of
trade/service mark Diversey under various jurisdiction of
hte world. Ex.P.2 and P.3 are the certificates for use in
legal proceedings the plaintiff registration under
Nos.1869551 and 1869552. Ex.P.4 to P.6 are the online
extracts of plaintiff’s registration under No.1869553,
1869554 and the certificate for use in legal proceedings
the registration No.1869555. Ex.P.7 and P.8 are the online
extract of the registration under Nos.1869556 and
1869557. Ex.P.9 and P.10 are the online extracts of
plaintiff’s IRDI registration bearing Nos.4004466 and
4082218. Ex.P.11 are the series of documents regarding
the awards and honors received by the plaintiff. Ex.P.12 to
P.15 are the printouts and screenshots of the plaintiff’s
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Com.OS.No.987/2022
website www.diversey.com, the plaintiff profile on the
facebook, linkedin and searches of the plaintiff’s
trade/service mark and art mark Diversey on google.com
and yahoo.com. Ex.P.16 are the series of photographs of
the plaintiff’s products. Ex.P.17 are the specimen invoices
of the sale of the plaintiff’s products under the
trade/service mark artwork Diversey. Ex.P.18 is the
assortment of advertisement featuring the plaintiff’s
registered trademark Diversey. Ex.P.19 is the extracts from
the websites of various hotels making use of the plaintiff’s
products. Ex.P.20 is the records maintained with the
Ministry of Corporate Affairs pertaining to the plaintiff.
Ex.P.21 is the series of screenshots from the plaintiff’s
website diversey.in. Ex.P.22 is the specimen of India
specific invoice of the plaintiff’s products carrying its
trade/service mark, artwork diversey. Ex.P.23 are the
copies of the articles and magazines newspapers. Ex.P.24
are the copies of the decisions pertaining to registration of
the plaintiff’s trademark.
10. Ex.P.25 is the online extract of defendant No.1
registration under No.4385833 in class 3 for the
trademark Divercy. Ex.P.26 is the cease and desist notice
dated 20.11.2020. Ex.P.27 is the reply sent to the said
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Com.OS.No.987/2022
notice by defendant No.1 through his counsel. Ex.P.28 is
the copy of the application filed by the plaintiff for
canceling the defendant No.1 trademark 4385833. Ex.P.28
are the printouts from the e-commerce portal Indiamart.
Ex.P.30 is the printout of the website
www.pabudiversy.com. Ex.P.31 is the series of
photographs pertaining to the objectionable mark
procured form defendant No.2. Ex.P.32 is the invoice with
respect to purchase of products from defendant No.2.
Ex.P.33 is the printouts of the email dated 27.01.2022
under which the copy of the counter statement filed by
defendant No.1 before trademark registry with respect to
trademark cancellation application filed by the plaintiff.
Ex.P.34 is the printouts of affidavit evidence lead by the
plaintiff before the trademark registry. Ex.P.35 and P.36
are the online extracts of application Nos.4378184,
4378571 and 5202160 filed by defendant No.1 before
trademark registry. Ex.P.37 is the notice of opposition
issued by the plaintiff dated 25.03.2022. Ex.P.38 is the
power of attorney executed in favour of P.W.1. Ex.P.39 and
P.40 are the printouts of the photographs regarding the
infringing products being sold at ALL Enterprises and
found in the factory premises of defendant. Ex.P.41 is the
acknowledgment issued by the police regarding the
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Com.OS.No.987/2022
complaint filed by the plaintiff. Ex.P.42 is the report of the
Commissioner in Com.Mis.91/2022 and Ex.P.43 is the
certificate under Sec.62(B)(4) of the then Indian Evidence
Act with respect to Ex.P.1 to P.26 and P.29 to P.37.
11. As already mentioned above the defendant No.1
though filed the written the statement has not
subsequently contested the proceedings. He has neither
cross-examined the plaintiff witness nor led any evidence
on his behalf. Therefore the affidavit evidence and the
documentary evidence produced by the plaintiff has
remained uncontroverted. The unchallenged evidence of
the plaintiff on record clearly stipulates that the defendant
No.1 by obtaining the registration and by making use of
the trademark Pabu Divercy has infringed upon the
plaintiff’s registered trademark Diversey even though
there are certain differences regarding the use of the
letters, shape of the bird, the use of colour in the artwork
logo nevertheless the trademark of the defendant No.1
which is registered subsequent to the registration of the
trademark of the plaintiff is phonetically and deceptively
similar to the trademark of the plaintiff amounting to
infringement of plaintiff’s registered trademark and logo
Diversey. The unchallenged evidence satisfactorily proves
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Com.OS.No.987/2022
infringement of the registered trademark, service mark
and the copyright artwork in the logo of the plaintiff
Diversey.
12. The learned counsel for the plaintiff has relied upon
the following decisions with respect to the principles to be
followed regarding the grant of relief of injunction in
trademark infringement and copyright infringement suits.
1. 1964 SCC Online SC 14, Kaviraj Pandit Durga
Dutt Sharma vs. Navaratna Pharmaceutical
Laboratories, wherein in para 29 it has been observed
as under:
Para 29: A point has sometimes been raised as to
whether the words “or cause confusion” introduce
any element which is not already covered by the
words “likely to deceive” and it has sometimes
been answered by saying that it is merely an
extension of the earlier test and does not add
very materially to the concept indicated by the
earlier words “likely to deceive”.
2. (1969) 2 Supreme Court Cases 727, Ruston and
Hornsby Ltd., vs. Zamindara Engineeering
Co.,wherein at para 8 it has been observe as under:
Para 8: In the present case the High Court found
that there was deceptive resemblance between
the word “RUSTON” and the word “RUSTAM” and21
Com.OS.No.987/2022therefore the use of the bare word “RUSTAM”
constituted infringement of the appellant’s trade
mark “RUSTON”. The respondent did not prefer an
appeal against the judgment of the High Court on
this point and it was, therefore, not open to him
to challenge that finding. If the respondent’s
trade mark was deceptively similar to that of the
appellant the fact that the word “INDIA” was
added to the respondent’s trade mark was of no
consequence and the appellant was entitled to
succeed in its action for infringement of its trade
mark.
3. (2005) 5 Supreme Court Cases 573, S.M.
Dyechem Ltd., vs. Cadbury (India) Ltd., wherein at
paragraphs, 25,26 and 30 it has been observed as under:
Para 25: It is well-settled that the plaintiff must
prove that essential features of his registered
mark have been copied. The onus to prove
‘deception’ is on the part of the plaintiff who
alleges infringement. A mark is said to be
infringed by another trader if, even without using
the whole of it, the latter uses one or more of its
“essential features”. The identification of an
essential feature depends partly on the courts’
own judgment and partly on the burden of the
evidence that is placed before it. Ascertainment
of an essential feature is not to be by ocular test
alone; it is impossible to exclude consideration of
the sound of words forming part or the whole of
the mark.
Para 26:It is no answer to a charge of
infringement-as contrasted with a passing off
action-that the defendant’s mark, whilst including
the plaintiff’s mark, includes other matters too.
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Com.OS.No.987/2022
Para 30:When the question arises whether a mark
applied for bears such resemblance to another
mark as to be likely to deceive, it should be
determined by considering what is the leading
character of each. The one might contain many,
even most, of the same elements as the other,
and yet the leading, or it may be the only,
impression left on the mind might be very
different. On the other hand, a critical comparison
of the two marks might disclose numerous points
of difference, and yet the idea which would
remain with any person seeing them apart at
different times might be the same. Thus, it is
clear that a mark is infringed if the essential
features, or essential particulars of it, are copied.
In cases of device marks, especially, it is helpful
before comparing the marks, to consider what are
the essentials of the plaintiff’s device. (Kerly para
17.08) The trade mark is the whole thing – the
whole picture on each has to be considered.
There may be differences in the parts of each
mark, but it is important to consider the mode in
which the parts are put together and to judge
whether the dissimilarity of the part or parts is
enough to make the whole dissimilar. It has been
said that if the only resemblances between two
marks are in parts which are common, so that the
owner of the one has taken nothing which is
peculiar to the other, then there is at all events
no infringement, at any rate unless the plaintiff
had a distinctive arrangement of the common
elements. ( But this approach is hardly suited to a
comparison of word marks; and even in relation
to label marks or other features of get-up, it
would be more appropriate to consider the case
as a whole, with due regard to the background
23
Com.OS.No.987/2022
provided by any other marks shown to be in use
4. (2001) 5 Supreme Court Cases 73, Cadila Health
Care Ltd., vs. Cadila Pharmaceuticals Ltd., wherein
at para 32 is it observed as under:
Para 32: We think not. In a country like India
where there is no single common language, a
large percentage of population is illiterate and a
small fraction of people know English, then to
apply the principles of English law regarding
dissimilarity of the marks or the customer
knowing about the distinguishing characteristics
of the plaintiffs goods seems to over look the
ground realities in India. While examining such
cases in India, what has to be kept in mind is the
purchaser of such goods in India who may have
absolutely no knowledge of English language or of
the language in which the trade mark is written
and to whom different words with slight difference
in spellings may sound phonetically the same.
While dealing with cases relating to passing off,
one of the important tests which has to be
applied in each case is whether the
misrepresentation made by the defendant is of
such a nature as is likely to cause an ordinary
consumer to confuse one product for another due
to similarity of marks and other surrounding
factors. What is likely to cause confusion would
vary from case to case.
5. (1978) 4 Supreme Court Cases 118, R.G.Anand
vs. M/s/ Delux Films and others, wherein at
paragraphs 45 and 46(2) it has been observed as under:
Para 45: Thus, the fundamental fact which has to
24
Com.OS.No.987/2022be determined where a charge of violation of the
copyright is made by the. plaintiff against the
defendant is to determine whether or not the
defendant not only adopted the idea of the
copyrighted work but has also adopted the
manner, arrangement, situation to situation,
scene to scene with minor changes or super
additions or embellishment here and y there.
Indeed, if on a perusal of the copyrighted work
the defendant’s work appears to be a transparent
rephrasing; or a copy of a substantial and
material part of the original, the charge of
plagiarism must stand proved. Care however
must be taken to see whether the defendant has
merely disguised piracy or has actually
reproduced the original in a different form,
different tone, different tenor so as to infuse a
new life into the idea of the copyrighted work
adapted by him. In the latter case there is no
violation of the copyright.
Para 46(2): Where the same idea is being
developed in a different manner, it is manifest
that the source being common, similarities are
bound to occur. In such a case the courts should
determine whether or not the similarities are on
fundamental or substantial aspects of the mode
of expression adopted in the copyrighted work. If
the defendants work is nothing but a literal
imitation of the copyrighted work with some
variations here and there it would amount to
violation of the copyright. In other words, in order
to be actionable the copy must be a substantial
and material one which at once leads to the
conclusion that the defendant is guilty of an act
of piracy.
25
Com.OS.No.987/2022
13. The observations made in the above cited decisions
sqarely applies to the prevailing facts and circumstances
of the case.
14. The learned counsel for the plaintiff in the course of
argument further contended that where the evidence of a
party which is not tested in the cross-examination the
same ought to be accepted by the Courts and an adverse
inference has to be drawn against a party who does not
step into the witness box. In support of his arguments he
relied upon the following decisions:
1. (1999) 3 Supreme Court Cases 573, Vidhyadhar
vs. Manikrao and another, wherein at paragraph 17 it
has been observed as under:
Para 17: Where a party to the suit does not
appear into the witness box and states his own
case on oath and does not offer himself to be
cross examined by the other side, a presumption
would arise that the case set up by him is not
correct.
2. (2012) 7 Supreme Court Cases 56, P Sanjeeva
Rao vs. State of Andhra Pradesh, wherein at para 16 it
has been observed as under:
Para 16: We may, in this connection, refer to the
following passage from the decision of this Court
in Sarwan Singh v. State of Punjab “It is a rule of
essential justice that whenever the opponent has26
Com.OS.No.987/2022declined to avail himself of the opportunity to put
his case in cross-examination it must follow that
the evidence tendered on that issue ought to be
accepted.”
3. (2013) 15 Supreme Court Cases 298,
Gangabhavani vs. Rayapati Venkat Reddy and
others, wherein at para 22 of the judgment it has been
observed as under:
Para 22: Thus, it becomes crystal clear that the
defence cannot rely on nor can the court base its
finding on a particular fact or issue on which the
witness has not made any statement in his
examination-in- chief and the defence has not
cross examined him on the said aspect of the
matter.
15. Observations in the above mentioned decision applies
to the prevailing facts and circumstances where the
defendant No.1 though filed a detailed written statement
did not choose either to cross-examine P.W.1 nor led any
evidence on his behalf.
16. The learned counsel for the plaintiff further contended
in the arguments that when the evidence of the plaintiff
has remained unchallenged which satisfactorily proves the
claim of the plaintiff and when the plaintiff has proved
infringement of its trade/service mark and artwork
copyrights plaintiff would be entitled for damages more so27
Com.OS.No.987/2022when the defendant stays away from the proceedings. In
support of his arguments he relied upon the following
decisions.
1. 2013 (134) DRJ 671, Disney Enterprises, Inc vs.
Rajesh Bharti and others, wherein at para 17 it has
been observed as under:
Para 17: This Court is also of the view that before
award of damages it is not necessary that the
plaintiff must show some particular benefit has
accrued to the defendant or that the plaintiff
must satisfy the Court by leading evidence that it
has suffered actual loss. In Microsoft Corporation
Vs. Ms. K. Mayuri & Ors., 2007 (35) PTC 415 Del.,
this Court has held “The practice of grant of
exemplary damages needs to be strengthened
particularly in those cases where flagrant
infringement is found. Such an exercise of power
is not to be fettered by any requirement that the
plaintiff must show some particular benefit which
has accrued to the defendant or that the plaintiff
must satisfy the court by leading evidence that he
has suffered actual loss. In a case where the
plaintiff proves such actual loss, he would be
entitled to the same. However, even without such
a proof, in case of flagrant infringement, the court
has the complete discretion to make such award
of damages as may seem appropriate to the
circumstances, so that it acts as deterrent. In
some cases, it is not possible to prove the actual
damages, namely, that there is a normal rate of
profit or that there is a normal or establish
licensed royalty. Yet, clearly, the damages have to
be assessed.”
28
Com.OS.No.987/2022
2. 2013 SCC Online Del 1927, Super Cassettes
Industries vs. M/s Rachana Television Pvt. Ltd.,
wherein at paragraphs 15 and 17 it has been observed as
under
Para 15: Having heard learned counsel for the
plaintiff and having perused the ex parte
evidence as well as documents placed on record,
this Court is of the opinion that plaintiff has
proved the facts stated in the plaint and has also
exhibited the relevant documents in support of its
case. Since the plaintiff’s evidence has gone
unrebutted, said evidence is accepted as true and
correct.
Para 17: The defendant has deliberately stayed
away from this Court proceeding with a view to
frustrate the plaintiff’s claim of damages. The said
act is unjustified. This Court is also in agreement
with the submission of learned counsel for
plaintiff that defendant’s illegal activities have a
cascading effect and set a bad example for other
licencees of the plaintiff. Consequently, the
plaintiff is also held entitled to punitive damages
against the defendants for failing to appear and
evading the necessity to present accounts.
3. (2022) 5 SCC 1 Renaissance Hotel Holdings Inc.
vs. B. Vijaya Sai and others, wherein at para 52 and 61
of the judgment it has been observed as under:
Para 52:It could thus be seen that this Court again
reiterated that the question to be asked in an
infringement action is as to whether the
defendant is using a mark which is same as, or29
Com.OS.No.987/2022which is a colourable imitation of the plaintiff’s
registered trade mark. It has further been held
that though the get up of the defendant’s goods
may be so different from the plaintiff’s goods and
the prices may also be so different that there
would be no probability of deception of the public,
nevertheless even in such cases, i.e., in an
infringement action, an injunction would be
issued as soon as it is proved that the defendant
is improperly using the plaintiff’s mark. It has
been reiterated that no case of actual deception
nor any actual damage needs to be proved in
such cases. This Court has further held that
though two actions are closely similar in some
respects, in an action for infringement, where the
defendant’s trade mark is identical with the
plaintiff’s trade mark, the Court will not enquire
whether the infringement is such as is likely to
deceive or cause confusion.
Para 61:It is further to be noted that the words
“RENAISSANCE” and “SAI RENAISSANCE” are
phonetically as well as visually similar. As already
discussed hereinabove, sub-section (9) of Section
29 of the said Act provides that where the
distinctive elements of a registered trade mark
consist of or include words, the trade mark may
be infringed by the spoken use of those words as
well as by their visual representation. As such,
the use of the word “SAI RENAISSANCE” which is
phonetically and visually similar to
“RENAISSANCE”, would also be an act of
infringement in view of the provisions of sub-
section (9) of section 29 of the said Act.
17. The above said observations squarely applies to the
prevailing facts and circumstances. The unchallenged
30
Com.OS.No.987/2022
evidence of the plaintiff and the defendant No.1 staying
away from the proceedings after filing the written
statement satisfactorily proves indulgence on part of the
defendant No.1 in infringing the trademark, service mark
and copyright artwork of the plaintiff Diversey by making
use of it deceptively and phonetically similar trademark,
copyright and logo and thereby the having unjustly
enriched itself by passing off the infringed trademark,
artwork and logo entitles the plaintiff to claim damages to
the extent of Rs.75,00,000/- as quantified by the plaintiff.
Hence for the aforesaid reasons, I answer Issue Nos.1
and 2 in the Affirmative.
18. ISSUE Nos.3 and 4:- In view of the findings arrived
under issue Nos.1 and 2 and for the reasons narrated
above the plaintiff would be entitled for the relief of
permanent and perpetual injunctions as prayed under
paragraphs 53(a) to (c), the relief of mandatory injunction
as prayed under paragraph 53(e) and would also be
entitled for damages of Rs.75,00,000/- as claimed under
para 53(g) of the plaint. Accordingly, I answer Issue
Nos.3 and 4 in the Affirmative.
31
Com.OS.No.987/2022
19. ISSUE No.5:- For the aforesaid reasons, I pass the
following.
ORDER
Suit of the plaintiff is decreed in part
with costs.
The defendants No.1 and 2 their
promoters, assigns, relatives,
successors-in-interest, licensees,
franchisees, partners, representatives,
servants, distributors, employees,
agents etc. and anyone associated with
them, or acting under or through them
are hereby restrained by an order of
permanent and perpetual injunction
from
a) infringement of the plaintiff’s
prior registered and well known
trade/service marks Diversey and from
using the marks Divercy, Divency and /
or any mark identical and/or deceptively
similar to the plaintiff’s trade/service
marks Diversey and /or either singularly
or in conjunction with any other word or
monogram/logo in any manner
32
Com.OS.No.987/2022
whatsoever including that as a trade
name/trading style, domain name, email
address etc. so as to infringe the
plaintiff’s said registered trade/service
marks.
b) infringement of the plaintiff’s
copyright vesting in the artwork by
exposing for sale or using the said
artwork or copying/reproducing or
causing reproduction of the same or any
colourable imitation or substantial
reproduction thereof including and/or in
any manner whatsoever.
(c) from using the marks Divercy, Divency and /or any mark identical and /or deceptively similar to the
plaintiff’s trade/service marks Diversey
and /or any other material proprietary to
the plaintiff in any manner whatsoever
so as to pass off or enable others to
pass off their goods, products, services
or business as that of the plaintiff or in
any way convey a connection with the
plaintiff.
33
Com.OS.No.987/2022
Further the defendants No.1 and 2 their
promoters, assigns, relatives,
successors-in-interest, licensees,
franchisees, partners, representatives,
servants, distributors, employees,
agents etc. and anyone associated with
them, or acting under or through them
are by an order of mandatory
injunction directed to deliver-up to
the plaintiff for destruction their entire
products, packaging, stationery, letter
heads, signage, reprographic material,
brochures, literature or any other
material bearing the marks Divercy,
Divency and/or any mark identical
and/or deceptively similar to the
plaintiff’s trade/service marks Diversey.
The defendant Nos. 1 and 2 shall also
joint and severally liable to pay to the
plaintiff a sum of Rs.75,00,000/-
(Rupees Seventy Five Lakhs Only)
as damages.
34
Com.OS.No.987/2022
Draw decree accordingly.
Office to send soft copy of the
judgment to respective parties on their
email if furnished.
[Dictated to the Stenographer Grade-III, transcribed by her, corrected and signed by me then pronounced in the
Open Court, dated this the 15th day of July 2025]
(ARJUN. S. MALLUR)
LXXXV Addl.City Civil & Sessions Judge,
Bengaluru.
ANNEXURE
LIST OF WITNESSES EXAMINED ON BEHALF OF
PLAINTIFF:
PW-1 Sri.Nitin Kalra
LIST OF DOCUMENTS EXHIBITED ON BEHALF OF THE
PLAINTIFF
Ex.P.1 Copies of registration certificates for
trade/service marks DIVERSEY and from
various jurisdiction of the world.
Ex.P.2 The certificate for use in Legal proceedings
issued by the Registrar of Trade Marks in
respect of the plaintiff’s registration under
No.1869551.
Ex.P.3 The certificate for use in Legal proceedings
issued by the Registrar of Trade Marks in
respect of the plaintiff’s registration under
35
Com.OS.No.987/2022
No.1869552.
Ex.P.4 The online extract of the plaintiff’s
registration under No.1869553 from the
website of the Trade Marks Registry.
Ex.P.5 The online extract of the plaintiff’s
registration under No.1869554 from the
website of the Trade Marks Registry.
Ex.P.6 The certificate for use in Legal proceedings
issued by the Registrar of Trade Marks in
respect of the plaintiff’s registration under
No.1869555.
Ex.P.7 The online extract of the plaintiff’s
registration under No.1869556 from the
website of the Trade Marks Registry.
Ex.P.8 The online extract of the plaintiff’s
registration under No.1869557 from the
website of the Trade Marks Registry.
Ex.P.9 The online extract of the plaintiff’s IRDI
registration No.4004466 from the website
of the Trade Marks Registry.
Ex.P.10 The online extract of the plaintiff’s IRDI
registration No.4082218 from the website
of the Trade Marks Registry.
Ex.P.11 Documentation in support of the above
awards and honours received by the
plaintiff.
Ex.P.12 Printouts/screenshots from the plaintiff’s
website www.diversey.com .
Ex.P.13 Printouts from the plaintiff’s profile on
www.facebook.com .
Ex.P.14 Printouts from the plaintiff’s profile on
www.linkedin.com .
Ex.P.15 Printouts of searches of trade/service
marks/artwork/name DIVERSEY and through
search engines such as www.google.com ,
www.yahoo.com etc.,
36
Com.OS.No.987/2022
Ex.P.16 Photographs of a few of the plaintiff’s
products.
Ex.P.17 Specimen invoices of sale of
products/services under the trade/service
marks/artwork/name DIVERSEY and issued
worldwide.
Ex.P.18 Copies of assortment of
advertisement/promotional material
including magazines featuring the
trade/service marks/artwork/name
DIVERSEY.
Ex.P.19 Extracts from the websites of Eurostars
Hotels, etc. featuring the plaintiff’s
aforesaid trade/service
marks/artwork/name.
Ex.P.20 The extract from the online records of the
Registrar of Companies maintained on the
website of the Ministry of Corporate Affairs
with respect to the plaintiff’s subsidiary.
Ex.P.21 Screenshots from the plaintiff’s website
www.diversey.in .
Ex.P.22 Specimen India-specific invoices of sale of
products/services under the trade/service
marks/artwork/name DIVERSY.
Ex.P.23 Copies of articles in magazines
newspapers.
Ex.P.24 Copies of the decisions mentioned at serial
No.1 and 2 above along with their
respective English translations.
Ex.P.25 The online extract of the Defendant No.1’s
registration under No.4385833 for the trade
mark Divercy in Class 3 from the webiste of
the Trade Marks Registry.
Ex.P.26 Copy of the plaintiff’s cease and desist’
notice dated November 20, 2020.
37
Com.OS.No.987/2022
Ex.P.27 A copy of the letter from counsel for the
defendant No.1 received by the plaintiff.
Ex.P.28 Copy of the plaintiff’s application fro
cancellation of the defendant No.1’s mark
under No.4385833.
Ex.P.29 Printouts from the e-commerce portal
indiamart.
Ex.P.30 A printout of the website
www.pabudiversy.com as well as its WHOIS
records.
Ex.P.31 Photographs of the products bearing the
objectionable mark as procured from the
defendant No.2.
Ex.P.32 Copy of the invoice issued in respect of the
purchase from defendant No.2.
Ex.P.33 Copy of the email dated January 27, 2022
vide which the defendant No.1’s Counter
statement was served upon the plaintiff.
Ex.P.34 Copy of the plaintiff’s affidavit being
Evidence in support of its application for
cancellation dated March 23, 2022.
Ex.P.35 The online extracts from the website of the
Trade Marks Registry in respect of the
defendant No.1’s application under
Nos.4378184 and 4378571 establishing its
misconduct of adopting deceptively similar
marks of renowned proprietors.
Ex.P.36 The online extract of the defendant No.1’s
application under No.5202160 from the
website of the Trade Marks Registry.
Ex.P.37 A copy of the plaintiff’s notice of opposition
dated March 25, 2022.
Ex.P.38 Power of attorney dated 21.10.2021.
Ex.P.39 Photographs of the infringing products sold
at ALL Enterprises.
Ex.P.40 Photograph of the infringing
38
Com.OS.No.987/2022
products/material at the factory premises of
the defendant.
Ex.P.41 Printout of the acknowledged issued by the
police dated 22.03.2023.
Ex.P.42 Commissioners report filed in
Com.Misc.91/2022.
Ex.P.43 Certificate u/S 65B of the then Indian
Evidence Act with respect to Ex.P.1 to P.26
and P.29 to P.37.
LIST OF WITNESSES EXAMINED ON BEHALF OF THE
DEFENDANT
Nil
LIST OF DOCUMENTS EXHIBITED ON BEHALF OF
THE DEFENDANT
Nil
(ARJUN. S. MALLUR)
LXXXV Addl.City Civil & Sessions Judge,
Bengaluru.
39
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