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.
2
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 3 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 or 4 Com.OS.No.987/2022 causing 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 5 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 6 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 2017.7
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 delivers 8 Com.OS.No.987/2022 innovative 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 9 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 10 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 11 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.
12Com.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 13 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 14 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 a 15 Com.OS.No.987/2022 deceptively 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.16
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 17 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 18 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 19 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 20 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" and 21 Com.OS.No.987/2022 therefore 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.22
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.987/2022 be 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 has 26 Com.OS.No.987/2022 declined 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 so 27 Com.OS.No.987/2022 when 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, or 29 Com.OS.No.987/2022 which 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.
31Com.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.
33Com.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.
34Com.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.
37Com.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