BABBAR WRECKERS PRIVATE LTD VS ASHOK LEYLAND LTD.

* IN THE HIGH COURT OF DELHI AT NEW DELHI DECIDED ON: 02.11.2010

+ I.A. Nos.5916, 8163/2009 & 1396/2010 in CS (OS) 803/2009

M/S BABBAR WRECKERS PRIVATE LTD. ..... Plaintiff Through: Mr. Hemant Singh with Ms. Mamta R. Jha and Mr. Manish Mishra, Advocates.

versus

M/S ASHOK LEYLAND LTD. & ORS...... Defendants Through: Mr. S.K. Bansal with Mr. Ajay Amitabh Suman, Mr. Anand Vikas Mishra and Mr. Pankaj Kumar, Advocates.

CORAM:MR. JUSTICE S. RAVINDRA BHAT

Whether the Reporters of local papers YES may be allowed to see the judgment?





To be referred to Reporter or not? YES





Whether the judgment should be YES reported in the Digest?

MR. JUSTICE S.RAVINDRA BHAT

% I.A. Nos.5916/2009 (O-XXXIX, R-1&2, CPC) & 8163/2009 (O-XXXIX, R-4, CPC)

1. The plaintiff (hereafter referred to as "Babbar Wreckers") seeks a decree for permanent injunction against the defendants (the first defendant is hereafter called "Ashok Leyland"; the second defendant is hereafter called "Perfect" and the third defendant is hereafter called "Niles"), to restrain the manufacturing, fabrication, sale and offering for sale light recovery vehicles (LRVs) using, or reproducing in any manner engineering drawings which are the subject matter of the technical specification Nos. CQA (QFV)/VEH/STLN/003/2005 and CQA (QFV)/VEH/STLN/003/2001 (hereafter called as 2005 and 2001 specifications) and other injunctive reliefs including a decree for mandatory injunction to direct Ashok Leyland to take delivery of 50 LRVs fabricated by





Babbar Wreckers. Consequential money decrees and a decree for rendition of accounts in respect of the sale of superstructure mounted on Stallion 4X4 vehicles of Ashok Leyland produced in accordance with 2005 and the 2001 specifications, are claimed.

The Court had initially granted the ex parte injunction on 4.5.2009 restraining the use of the drawings pertaining to the two specifications or even from manufacture and supply to the fourth defendant i.e. Central Government. The defendants had carried the matter in appeal; the Division Bench disposed of the appeal recording that Ashok Leyland would move an application for vacation of the interim order. Accordingly, I.A. No.8163/2009 was filed by Ashok Leyland on which notice was served. This order proposes to dispose of the plaintiff’s interim injunction application -I.A. No.5916/2009 and the defendant’s application for vacation of the interim order, I.A. No.8163/2009.





The brief facts necessary for the case according to the suit averments are that the Babbar Wreckers claims to be engaged in manufacturing and designing wreckers (also known as LRVs) for more than 40 years and to having supplied them to various Government departments. The equipments are reliable and easy to operate and are mounted on suitable commercial vehicles. Babbar Wreckers claims to have earned substantial reputation and goodwill for the performance of its wrecker equipment and also claims to have spent considerable money in designing and development them having regard to their functionality. It is submitted that in 1980-85, one model of a wrecker known as "Babbar Model GN-7 Medium Recovery Breakdown" (BWGN-7) was designed. An application for trademark registration was made on 28.7.1983. Babbar Wreckers claims to have participated in 1995 in the India International Trade Fair and demonstrated its equipments mounted on TATA 1210D LPT to various vendees. It is submitted that in September, 1995, Central Government through the Ministry of Defence was looking for supply of LRVs and the first defendant submitted its specifications to Army Headquarters with regard to development and supply of LRV on 5/7.5 Ton Stallion MK-II on Ashok Leyland Chassis for procurement of purchase order. It is stated that this was rejected by the Ministry of Defence. Subsequently, on 9.1.1996, a technical group of the Army Headquarters wrote to the Director General, EME (Eqpt.), informing that preliminary assessment of the specifications submitted by the Ashok Leyland for

development of LRV on 5/7.5 Ton Stallion MK-II was found untenable. It is stated that

the same letter recommended the plaintiff for development of LRVs of 7.5 Ton capacity.

The plaintiff’s name was recommended to Ashok Leyland. The said letter reads as

follows:

"4. In Dec. 95 M/s Babbar Wrecker Pvt. Ltd. demonstrated their wrecker eqpt during the exhibition of India International Trade Fair –

95. This firm has been manufacturing wrecker eqpt. for last 30 yrs and they have already supplied over 200 wrecker eqpts to various agencies in India. The gist of the points, after detailed discussion with M/s Babbar Wrecker Pvt. Ltd., are as follows:

(a) Thefirm demonstrated their wrecker eqpt mounted on Tata 1210D LPT, to Chief Automotive Engineer, which could lift 7.5 ton dead weight on outriggers, without stay anchor, with single line pull. They have already developed PTO, winch-gear, booms, super structure and outriggers to handle load up to 15 Tons on single line pull.





(b) M/s Babbar Wrecker Pvt. Ltd. claims that their wrecker eqpt, to handle 7.5 tons lift and line pull, will weigh under 3.5 Tons.





(c) The firm offers to supply wrecker eqpt with 7.5 Ton line pull within 4 to 6 weeks on receipt of orders, for trials. They have also offered to undertake development of 7.5 ton LRV on any suitable chasses.

In view of para 4 above M/s Babber Wrecker Pvt. Ltd. has been asked to provide specifications compatible to GSQR. In addition, Mr. P. Dhanasekaran, Senior Dev elopement Manager (Spl Veh) of M/s Ashok Leyland, has also been provided details of M/s Babber Wrecker Pvt. Ltd. to facilitate dev elopement of Light Recovery Vehicle of 7.5 Ton capacity.





Considering the feasibility of development 7.5 ton Wrecker eqpt, the following options are now available.

 Option-1. M/s Ashok Leyland be advised to procure 7.5 ton wrecker equipment from M/s. Babbar Wrecker Pvt. Ltd. for development of prototype LRV.

 Option-2. One 5/7.5 ton Stallion MK-II be offered to M/s.

Babbar Wrecker for development of LRV preferably on „no cost no commitment‟ basis under the aegis of HQ Tech Group. This

option provides a scope for development of LRV by the Army Base Wksp.  Option-3. Assigning one of the Army Base Wksp eqpt. Ex. M/s. Babbar Wrecker. One 5/7.5 Ton Stallion MK-II be made

available to the assigned Base Wksp for this task. This option will be suitable on long term basis as the existing financial rules

and procedure would require some alterations."

4. Babbar Wreckers contends having represented on 24.1.1996, enclosing its "Breakdown Wrecker" brochure to the Army Headquarters showing its interest for the supply of the required equipment. The suit avers that Ashok Leyland on 12.03.1996 wrote to Babbar Wreckers requesting it to provide super structure drawings and technical data in respect of 7.5 ton wrecker equipments to seek further approval from the Army Headquarters. The material part of the letter reads as follows: -

"… In order to proceed with the project, it is necessary to make a superstructure drawing and get it approved. Kindly also furnish all the technical data regarding the 7.5 ton Wrecker to enable us make an offer to Defence and to recheck at our end the Wreckter transmission ratio, service drum gear ratio and the sprocket ratio.

Kindly arrange to send the drawing and the technical details at

the earliest…."

5. Babbar Wreckers submits that on 31.07.1996 it informed Ashok Leyland about fabrication of a prototype recovery breakdown Wrecker of 7.5 tons capacity on its

(Ashok Leyland’s) vehicle, Stallion 4X4 and that it was ready for inspection and testing

by the Army.

6. The suit further states that Ashok Leyland on 11.12.1999 wrote a letter to Babbar Wreckers asking it to prepare and submit the fabrication drawings of the LRV. The suit relies upon the Minutes of the Meeting dated 17.04.2000 held at the Army Headquarters to decide the modalities for inspection of pilot LRV 5/7.5 Stallion and states that its drawings were actually agreed to be furnished to Central Government. Babbar Wreckers states that it thereafter prepared the engineering drawings which were computer generated and specially prepared by its Draftsman under the direct supervision of Mr. Naresh Babbar, its Managing Director. The drawings were furnished to Ashok Leyland and the Central Government. They were provisionally approved by the Deputy Controller, CQAE (OFV), Jabalpur, of the Central Government. Babbar Wreckers further states that it developed and designed the wrecker equipment as per specifications of the Central Government which were tested and approved. Later on 9.6.2000, the Central





Government issued a purchase contract to Ashok Leyland for supply of 195 LRV based on 5/7.5 ton Stallion as per the approved specification No. CQA (OFV)/VEH/STLN/LRV/2K/03 (hereafter called as "2K specification") on the understanding that Babbar Wreckers would be fabricating the LRVs on Ashok Leyland’s vehicles. Ashok Leyland thereafter issued a letter of intent dated 8.8.2000 for supply of 195 breakdown wreckers units, out of which 100 were supplied by Babbar Wreckers and 95 by Perfect. Babbar Wreckers relies upon a joint inspection and its Minutes of meeting to say that the LRVs were fabricated by it was in conformity with its engineering drawings and specifications. The Minutes of meeting/inspection report has been filed.

Babbar Wreckers claims to have entered into an arrangement whereby Perfect was granted license to use its drawings at the behest of Ashok Leyland; reliance is placed on agreements dated 8.9.2000, 21.9.2000, 7.2.2002 and 15.4.2002 for payment of what is termed as nominal royalty of 3% to 7% of the basic price of the LRVs. Perfect is alleged to have paid royalty to Babbar Wreckers, till 2002. The agreement between the parties dated 7.2.2002 was valid till completion of the work order. It is stated that even though Perfect did not pay royalty despite its obligation to do so, Babbar Wreckers allowed it to use the drawings as a gesture of goodwill but at the same time that cannot be construed as waiving its right to claim such royalty. Babbar Wreckers then mentions about the various contracts between 2000-2005 where the work orders were procured by Ashok Leyland for supply of the entire LRV; the fabrication and supply of wreckers were distributed between the Babbar Wreckers and Perfect. These have been detailed in paragraph-24. For the period 2000-2009, such orders for supply of 1121 vehicles was given by the Central Government in five lots; Babbar Wreckers was given the contract (or sub-contract) to fabricate 664 wreckers assemblies. Babbar Wreckers submits that according to the understanding between the parties whenever Ashok Leyland procured the orders for supply of the vehicles with the wrecker assemblies, it (Babbar Wreckers) invariably was given a proportionate order for fabrication of the wrecker assembly and Perfect was to get a proportionately lower quantity. The suit mentions about a legal notice dated 1.10.2005 to Perfect, calling upon it to pay royalty which led to intervention

of the Central Government. In this letter, the Central Government stated that unless the

matter was resolved inter se, it would not place any further orders on Ashok Leyland. It

is stated that in these circumstances, on 27.12.2005, Babbar Wreckers wrote to the

Central Government stating that the matter had been resolved.

8. Babbar Wreckers relies upon the grant of provisional Proprietary Article

Certificate by the Central Government on 9.6.2004, which was granted. The said

Proprietary Article Certificate dated 2.2.2005 reads as follows:

"M/s Babbar Wrecker Pvt. Ltd., B-11, Mayapuri Industrial AreaPh-1, New Delhi -110 064

PAC FOR SUPERSTRUCTURE OF LRV 5/7.5 TON MODEL BWGN-7C/BWGN-7C/A MOUNTED ON STALLION 4X4

Dear Sirs,

Reference: (i) Your letter No.BWPL/CQAV/04 dt. 25.12.04.

(ii) this office letter of even No. dt. 5.1.05 and 25.1.05.

Superstructure Model BWGN-7C/BWGN-7C/A, developed and designed by M/s. Babbar Wreckers was trial evaluated at VRDE and by users extensively. Accordingly, Specification No. CQA (OFV)/VEH/STLN/003/2001 was formulated.





Details of items for which PAC is accorded except bought out and hardware items as indicated in the ISPL submitted by you are enclosed as

Appendix „A‟.

4. Further, as requested vide our letter dated 25.1.05 copy of two sets of complete manufacturing drgs. consisting of Gp 32.01 to 32.23 including Assys/Sub-Assys as given in general arrangement, Accessories and SMTs may please be forwarded to this Controllerate. The drgs. are required to be forwarded within 7 days to this Controllerate four our sealing and scrutiny purpose. It is pertinent to mention here that no changes/modification shall be carried out without the prior approval of this Controllerate.

Thanking you, Yours Sincerely

(J.S. Sangwan)"

9. Babbar Wreckers complains that a departure from the previous understanding and

agreement took place, when Ashok Leyland was placed with an order of supply of 286

LRVs in January, 2009, the contract/order for fabrication and supply of all the wrecker

assemblies was, however, placed on Perfect. It is stated that this was in breach of the

agreement as Babbar Wreckers had put in tremendous labour and effort in securing its

drawings approved and was entitled to at least half of the order but was content to

maintain cordial relations by executing the orders for wrecker assemblies only in respect

of 50 LRVs. It is submitted that if the past precedent and practice were to be taken into

account, Babbar Wreckers was entitled to manufacture at least 50% of the total orders

placed upon Ashok Leyland; the latter kept on evading and giving vague assurances.

Ultimately, a legal notice dated 7.4.2009 was issued to the first three defendants,

terminating the license to use the drawings and specifications. Babbar Wreckers claims

that it is the author and owner of the copyright in the 2001 and 2005 specifications; the

claim is founded on the following plea:

"36. It is submitted that the specification no.CQA(OFV)/VEH/STLN/LRV/2003/01 and specification no.CQA (OFV)/VEH/STLN/LRV/2003/05 approved by the Ministry of

Defence for fabrication of LRVs comprise of Plaintiff‟s

engineering drawings, specifications and technical know-how. The subject matter of the said specification contains several engineering drawings of Wrecker equipments which illustrate the functional features thereof. The said engineering drawings constitute original artistic works within the meaning of Section 2

(c) of the Copyright Act, 1957 and are entitled to copyright protection. All the engineering drawings are computer generated drawings prepared by the draftsman Mr. Aman under the employment of the plaintiff and under the supervision of Mr. Naresh Babbar, Managing Director of the Plaintiff. The said engineering drawings are artistic works, designed and created at instance of Plaintiff for valuable consideration paid. The plaintiff, therefore, is the owner of copyright therein having exclusive right to use or reproduce features thereof in any material form, directly or indirectly, including three dimensional form from two dimensional drawings or three dimensional form by the process of

"reverse engineering". The fabrication of any Wrecker

equipment (LRV) based on the engineering drawings and specifications of the Plaintiff without plaintiff‟s authorization constitute violation of Plaintiff‟s copyright in the engineering drawings pertaining thereto, which, apart from constituting infringement under Section 51 (a) of the Copyright Act, 1957, also amounts to cognizable offence, punishable with imprisonment up to three years and fine up to Rupees Two lakhs, under Sections-63

and 64 of the Copyright Act, 1957."

10. The plaintiff argues that the pleadings and documents on record prove beyond doubt, that it is the copyright owner of the drawings conforming to the specifications of 2001 and 2005, used by the Ashok Leyland and Perfect for assembling the wrecker units. It is submitted that such drawings are artistic works under Section 2 (c) of the Copyright Act, 1957 (hereafter called "the Act"). Counsel argues that these drawings are product of the creative effort put in at the plaintiff’s behest. It is submitted the authority and





right to exclusively reproduce the drawings in material, three dimensional form, vests in the plaintiff, which both Ashok Leyland and Perfect have infringed.

Babbar Wreckers relies on the judgments reported as John Richard v. Chemical Process Equipment (P) Ltd. AIR 1987 Del 372; Escorts Construction Equipment Ltd. & Anr. v. Action Construction Equipment (Pvt.) Ltd. 1999 PTC 36 (Del), etc. for the proposition that drawings are deemed to be artistic works, and entitled to protection under the Act. It is submitted that having used Babbar Wreckers drawings, and secured orders from the Central Government, which were exploited fully, the plaintiff cannot be deprived of the benefit of copyright, by the defendants. It is submitted that despite service of summons, steps have not been taken by the Central Government to contest the suit.

The plaintiff contends in addition that the defendants particularly the Ashok Leyland and Perfect cannot dispute its copyright because of the circumstance that royalty was consistently paid in accordance with the previous arrangements. It is argued that the Babbar Wrecker’s copyrights thereby stand explicitly established and it is entitled to the injunction as claimed. The reliance is placed upon the judgment reported as Najma Heptulla v. M/s Orient Longman Ltd. & Ors. AIR 1989 Del 623.





14. The first three defendants have filed a common written statement. They contend that in 1995, Ashok Leyland offered to supply LRVs consisting of its Stallion 4X4 Chassis with wrecker to the Central Government as per the latter’s requirement which was later published as JSQR No.2320-03 of 1996. It is stated that in 1995 itself Ashok





Leyland prepared its drawing X9828800 disclosing the basic lay out of the proposed LRVs. The submission is that the Ashok Leyland does not fabricate wreckers itself and, therefore, had approached various vendors. It is stated that in 1996, the plaintiff’s name -for fabrication of the concerned wrecker units-was suggested to the Central Government. The defendants’ claim that the wrecker units were assembled according to the specifications spelt out on the basis of the said drawing X9828800 and even the proto-type was made subsequently.



The defendants’ emphasize on the averments in the suit to the effect that the prototype of the recovery breakdown wrecker of 7.5 tons capacity, was fabricated sometime in July, 1996 and a letter to the same effect had been given by the plaintiff. It is submitted that the documents placed on the record clearly demonstrates that the drawings on which copyright is claimed are dated 9.7.2000 and consequently the claim for creation of original drawings in 1996 is ex facie untenable. The defendants argue that the entire basis of the suit claim about the subsistence of the copyright, therefore, is without documentary basis.





Amplifying the submissions, it is further stated that the plaintiff’s case that the prototype of the wrecker were ready in 1996 in turn constitute a implicit admission that they were based on some other drawings which unambiguously point to the plaintiff’s JSQR No.2320-03 of 1996 specifications and drawing X9828800. The defendants argued that the plaintiff could not have developed and fabricated the wrecker unit or even its pilot prototype in the absence of drawings. It is, therefore, urged that these facts are sufficient to foreclose the claim for injunction and certainly prima facie rebut the submission that the plaintiff is a copyright owner of the drawings embodying in the 2001, 2003 and 2005 specifications. The defendants urged that any two dimensional rendering or reduction/recording of a three dimensional object is subject to copyright protection in terms of Section 14; according to them in this case, the three dimensional rendering was of prototype/pilot wreckers in 1996 itself. The plaintiff, it is stated, does not claim copyright over such articles -nor can claim it. Therefore, the copying or recording of such articles in two dimensional forms does not confer exclusive rights.





The defendants argue that the wrecker units are just constituents of an overall

article which they were contracted to supply to the Central Government. It is stated that such articles i.e. LRVs are essential for public use by the defence forces and that grant of an injunction of the kind sought for, would led to untoward consequences. The defendants, in this regard, submit that the drawings are not subject to copyright protection since they constitute Government works under Section-17 (d) of the Copyright Act, which is in the following terms:

"17. First owner of copyright.-Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein Provided that-

XXX XXX XXX

(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;"

18. The defendants further submit that in any event, the use of drawings as is complained of does not constitute copyright infringement under Section-52 (x) of the Act which is in the following terms:

"52. Certain acts not to be infringement of copyright. -(1) The following acts shall not constitute an infringement of copyright, namely:

XXX XXX XXX

(x) the reconstruction of a building or structure in accordance with the architectural drawings or plans by reference to which the building or structure was originally constructed:

Provided that the original construction was made with the consent or licence of the owner of the copyright in such drawings and plans;"

19. The defendants further submit that in terms of the JSQR No.2320-03 of 1996 published by the Central Government which forms the basis or foundation in the formulation of specifications for wrecker units, the proprietary rights over all the drawings and allied literature vests with the Central Government. The relevant condition in Paragraph-37 is relied upon:

"PROPRITORY RIGHTS 37. In the event of the proto-type vehicle being accepted as a standardized product, the aforesaid vehicle design and literature submitted by the firm concerned shall be deemed to have become the property of Govt. of India, Ministry of Defence."

It is submitted that there cannot be any estoppel as is argued by the plaintiff; as it would amount to undermining the public interest. The reliance is placed upon the judgment of the United States Court of Appeal of the VIth Circuit reported as Beer Nuts, INC, v. King Nut Company 477 F.2d 326. It is stated that the said judgment though in the context of patent protection applies equally in the case of copyrights where if a monopolist claims and is granted royalty on premises which the later discovered to be unfounded, it is in the public interest that estoppel is not held against the ostensible licensee. The defendants also rely upon the judgment reported as BRY Air India (P) Ltd. & Anr. v. Western Engineering Company 1999 PTC (19) 48 for the submission that when information is furnished to someone on the basis of which drawings or specifications are formulated, the person who creates such drawings or specification under these circumstances cannot claim copyright.





It is argued that the injunction granted initially by this Court is holding up all further negotiations and consequent award of similar contracts to Ashok Leyland which was undisputedly given the assignment of all previous actions, even according to the plaintiff. Ashok Leyland argues that its tender for supply of further 116 numbers of LRVs mounted on its 4X4 Stallion is subject to advance negotiations and only the price component has to be finalized. Learned counsel argues that if the Court were to confirm the injunction, even without a formal contract, it would be mandated to award a part of the contract to the plaintiff -a proposition which is contrary to the principles for grant of injunction which clearly are that the Courts cannot in exercise of their jurisdiction compel the parties to enter into a contract. It is submitted that at best if the Court is satisfied that the plaintiff is the prima facie copyright owner and that the previous arrangement between the parties entitled it to royalty, suitable orders to secure the plaintiff’s interest in that regard may be made.





22. It can be seen from the above discussion that Ashok Leyland manufactures the main assemblies of the LRVs; Babbar Wreckers and Pefect manufacture the wrecker





units, mounted on it (Ashok Leyland’s heavy vehicle is known as the Stallion 4X4). It is the common case of parties that these vehicles are utilized by the Ministry of Defence. Babbar Wreckers claims to have been manufacturing 3.5 tonne capacity wreckers, earlier, and developed the prototype which matched the Central Government’s requirements, sometime in 1995. Its positive case is that its drawings formed the basis for a prototype manufactured, for the first time, in 1996; a letter dated 31-7-1996 is relied on. Similarly, it relies on several letters by Ashok Lelyland, asking it to prepare the drawings, for manufacturing the wrecker unit. The other materials include the letter to Ashok Leyland, dated 11-7-1999, and agreements dated 8.9.2000, 21.9.2000, 7.2.2002 and 15.4.2002 for supply of various quantities of wrecker assemblies, where the second defendant had agreed to pay royalty to the plaintiff.



The plaintiff is correct when it submits that copyright can subsist, in mechanical drawings. The question here, however is, whether such prima facie case about the

proprietorship as asserted by it has been made out. Though the plaintiff’s argument is that the drawings were made in 1996, under its Managing Director’s supervision, and

direction, no such drawing has been produced. Significantly, all the drawings placed on the record are of mid-2000 vintage; each is contemporaneous to the date when the Central Government placed the orders upon Ashok Leyland. The plaintiff carefully avers that the prototypes of the wreckers, which were ultimately supplied, and were the subject matter of inter se understanding or arrangement with Ashok Leyland, were assembled for the first time, in 1996. Undeniably, such prototypes must have been prepared on the basis of some drawings. Yet, those drawings are not forthcoming. The plaintiff argues that the drawings were prepared, on the basis of such prototype. Now, a facial look at the product drawings and photographs would lead on to infer, at least prima facie, that some technical drawings were required for their manufacture, as they are expected to haul and carry heavy weights, and are to be mounted on chasis manufactured by another concern. Such being the case, the plaintiff’s argument about creation of the drawings after the prototypes were manufactured, seems implausible, to say the least. What is prima facie

credible, on the other hand, is Ashok Leyland’s assertion that its prototype and

specifications JSQR No.2320-03 of 1996 and drawing X9828800 were accepted by the Central Government, in 1995, after which Babbar Wreckers was approached in 1996, to make the wrecker units. The inter se correspondence with Ashok Leyland, then becomes

comprehensible, as the latter’s insistence that the drawings, according to its

specifications, were to be prepared.

24. The second aspect, and an important one at that is that the court cannot shut its eyes to clause 37 of the JSQR which formed the basis for awarding the contract, unambiguously states that the Central Government would be the proprietor of the design

and product ("proto-type vehicle being accepted as a standardized product, the aforesaid vehicle design and literature submitted by the firm concerned shall be deemed to have become the property of Govt. of India, Ministry of Defence."). This stipulation-coupled with Section 17 (d)-also prima facie point to copyright ownership of the Central Government, in the drawings. Here, one cannot lose sight of the fact that the contracts were primarily awarded to Ashok Leyland, which only parted with a portion of them, to the plaintiff, as regards wrecker assemblies. They were and are meant to be used for transportation of materials, and hauling of heavy loads and equipment, for defense purposes, and cater to an obvious public or national purpose.

25. As far as estoppel is concerned, the plaintiff relies on Najma Heptulla‟s case. In that, the plaintiff was a legal representative of Maulana Azad, who had supplied his book to Prof. Humanyun Kabir for its narration and translation. The plaintiff had received 50% royalty for 30 years, and granted copyrights to the publisher. The court restrained the plaintiff from challenging the validity of the agreement. The plaintiff was not granted injunction to stop the defendant from publishing the book even after the said term was over. In this case, however, the materials on record suggest that Perfect had stopped paying royalty to the plaintiff, sometime in 2002; this had led to exchange of legal notices, and the Central Government intervening with the plaintiff, which had withheld supplies. The plaintiff resumed supplies, and did not claim royalties. The legal notice which preceded the present case, too, did not claim royalty arrears, nor was any leave sought to claim them; in any case, such claims are now time barred. An added circumstance is that for the subsequent supplies, there was no payment of royalty. In these facts, the court is of the opinion that having regard to the wide nature of copyright claims, in such cases, which amount to declaration of monopolistic rights over the entire world, the grant of an equitable remedy of injunction solely on the behavioral principle of estoppel, would be inappropriate. In trademark infringement, however, considerations are different, because the nature of defences vary, as the defendant can establish honest concurrent user, prior user, etc, since the claim is uniquely asserted on a case to case basis. However, a copyright subsists for the longest duration, in the cluster of intellectual property rights, and the courts are entitled to test the wide and sweeping nature of rights asserted, undoubtedly in the context of an estoppel, but not soley on such bases. In this case, royalty was paid in about two instances, and had not been paid for over 7 years before this case was instituted. In the circumstances, there is no estoppel which bars the

defendants from contesting the plaintiff’s copyright in the drawings.

The court has noticed more than once, previously, in this judgment, that the contracts have an underlying public purpose, ie. catering to the needs of the Ministry of Defence. The documentary materials on record prima facie suggest that even though Ashok Leyland granted Babbar Wreckers the contract to manufacture wrecker assemblies, roughly in the proportion of 50% of what granted in the orders, there is no written arrangement. The plaintiff of course has averred that royalty of 3% to 7 % used to be paid to it by Perfect in respect of the wrecker units assembled by it. However, in the absence of any indication about the duration of the arrangement, and any positive evidence that such understanding was to operate in a specific manner, for all times to come, or for a period, it would be imprudent for the court to issue a direction to Ashok Leyland, to share its contract execution with Babbar Wreckers. Such a direction would result in the court enjoining a party to enter into a contract, which it clear cannot issue. Furthermore, the court is of the opinion that attaching any condition of the kind insisted upon by the plaintiff to permit execution of any contract by the Central Government with Ashok Leyland, would clearly not be in the public interest. Clause 37 of the JSQR, also points to the possibility of the Government being the owner and author of the works. In the circumstances, the court cannot be blind to the public interest element, which looms large in this case.





In view of the above discussion, it is held that the plaintiff has been unable to

establish, prima facie, to its being a copyright owner. At the same time, the court is conscious that it has been beneficiary in previous contracts, and that 3-7 % royalty was being paid to it – although some time ago. Having regard to these overall circumstances, and to balance the competing rights, and protect the plaintiff’s interest, Ashok Leyland is

directed to furnish an undertaking to pay damages in the event of the plaintiff succeeding. It shall, to that end, also file accounts, and statements, in respect of the amounts received and profits, if any, derived in the contracts that were executed when the suit was filed, and further contracts to be executed, in the event of their being awarded to it, by the Central Government. Such accounts shall be filed once each year. Ashok Leyland is also directed to furnish a bank guarantee for the sum of Rs. 30,00,000/-in favour of the Registrar of this Court, to satisfy any money decree, within four weeks from today.

28. IA Nos.5916, 8163/2009 and 1396/2010 are disposed of in the above terms.

CS (OS) 803/2009

th

The suit shall be listed for further proceedings, on 29November, 2010.

S. RAVINDRA BHAT (JUDGE)

NOVEMBER 2, 2010

Ishi Khosla vs Anil Aggarwal

Delhi High Court

Mrs. Ishi Khosla vs Anil Aggarwal & Anr. on 20 March, 2009

Author: Anil Kumar

* IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(OS) No. 309/2005 % Date of Decision: 20.03.2009 Mrs. Ishi Khosla .... Plaintiff Through: Mr. Nitin Sharma and Mr. Ankush Mahajan, Advocates.
Versus
Anil Aggarwal & Anr. .... Defendants Through: Mr. Ajay Amitabh Suman and Mr. Shashi P. Ojha, Advocates.
CORAM:
HON'BLE MR. JUSTICE ANIL KUMAR
1. Whether reporters of Local papers may be YES allowed to see the judgment?
2. To be referred to the reporter or not? NO
3. Whether the judgment should be reported in NO the Digest?
ANIL KUMAR, J.
*
+ IA No.3811/2009 in CS(OS) No.309/2005
This is an application by the parties for decreeing the suit in terms of the settlement arrived at between the parties. The terms of the settlement are incorporated in the application under Order XXIII Rule 3 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to as 'CPC') being I.A. No. 3811/2009. Under the settlement, the defendants have agreed that a decree for injunction be passed restraining them from using the trade mark of the plaintiff and the plaintiff has agreed to give up his claim of damages against the defendants.
CS(OS) No. 309/2005 Page 1 of 3 The defendants have also agreed to withdraw their application seeking registration of the trade mark 'Whole Foods' and have also agreed to withdraw the opposition filed by the defendants to the application of the plaintiff for registration of the trade mark 'Whole Foods'.
The application is signed by the plaintiff and defendants and their respective counsels and is also supported by the affidavits of Mrs. Ishi Khosla, plaintiff and Mr. Anil Aggarwal, defendant No. 1 and the sole proprietor of defendant No. 2. There does not seem to be any impediment in allowing the application.
Consequently, the application is allowed and the suit of the plaintiff is decreed in terms of the settlement arrived at between the parties, the terms of which are incorporated in I.A. No. 3811/2009 under Order XXIII Rule 3 read with Section 151 CPC. The application stands disposed of.
CS(OS) No. 309/2005
The parties have settled their disputes and their application incorporating the terms of the settlement being I.A. No. 3811/2009 under Order XXIII Rule 3 read with Section 151CPC has since been allowed.
Consequently, the suit of the plaintiff is decreed in terms of the settlement arrived at between the parties in I.A. No. 3811/2009 under Order XXIII Rule 3 read with Section 151 CPC. Decree sheet be drawn where I.A. No. 3811/2009 shall form part of the decree. All the CS(OS) No. 309/2005 Page 2 of 3 pending applications are also disposed of and parties are left to bear their own costs.
MARCH 20, 2009 ANIL KUMAR, J. sb

KAMDHENU ISPAT LIMITED Vs NANDLAL FRUIT PROCESSOR PVT LTD

M/S Kamdhenu Ispat Limited vs M/S Nandlal Fruit Processor Pvt ... on 10 July, 2012

$~ R-37
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: July 10, 2012
+ RFA(OS) 129/2010
M/S KAMDHENU ISPAT LIMITED ..... Appellant Represented by: Mr.Ajay Amitabh Suman, Advocate with Mr.Pankaj Kumar, Advocate
versus
M/S NANDLAL FRUIT PROCESSOR PVT LTD & ANR ....Respondents
Represented by: None
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J. (ORAL)
1. The present Regular First Appeal arises out of the judgment/order dated 18th October, 2010 whereby the appellant's suit bearing CS(OS) No.2301/2008 for infringement of trade mark and passing off was dismissed along with the pending applications.
2. The finding of the learned Single Judge was that the suit itself does not disclose any cause of action for any reliefs claimed.
3. The suit as well as the interim application was listed before the Court. Learned counsel appearing on behalf of the appellant states that only in the interim application, arguments were addressed by both sides.
4. As far as the finding arrived in the interim application is concerned, we have heard the learned counsel
RFA(OS) 129/2010 Page 1 of 3 appearing on behalf of the appellant and after hearing, we are of the considered view that it is not a fit case which requires any interference, in view of the averments made in the pleadings of the defendants and documents placed on record. The learned Single Judge after examining those documents has rightly come to the conclusion that the documents filed by the defendants therein showed that they have been using the word 'KAMDHENU' as their corporate name/trade name since 1969; their documents also revealed a partnership deed of 1986 and the material on record also suggested that they have been using the mark at least since 2000 if not earlier. The suit was filed in the year 2010. The business activities of both the parties are different, as the plaintiff/appellant is engaged in the business of manufacturing and selling steel products and on the other hand, the defendants/respondents are in the business of trading spices, pickles etc.
5. We agree with the said finding arrived by the learned Single Judge who dismissed the interim application being I.A. No.13348/2008. However, by rejecting the interim injunction, the learned Single Judge has also rejected the plaint by observing that the suit itself does not disclose any cause of action for any of the reliefs claimed.
6. We are not agreeable with the said view taken by the learned Single Judge, as a cause of action is a bundle of facts which are required to be pleaded and proved for the purposes of obtaining relief claimed in the suit. Whether a plaint discloses a cause of action or not is an essential question of fact, but whether it does or does not, must be found out from reading of the plaint itself. In ascertaining, whether the plaint shows a cause of action, the Court is not required to make an elaborate inquiry into doubtful or
RFA(OS) 129/2010 Page 2 of 3 complicated question of law and facts. Rejection of plaint is a serious matter, as it non-suits the plaintiff and it finishes a cause of action, the moment plaint is rejected. In the present case, we feel that the plaint ought not to have been rejected while deciding the interim application. Even there was no representation on behalf of the respondents in this regard.
7. Under these circumstances, the appeal is partly allowed. As far as the interim application under Order XXXIX, Rules 1 & 2 CPC being I.A. No.13348/2008 is concerned, the same shall be treated as dismissed. The suit is accordingly restored at its original position.
8. The suit shall be listed before the Joint Registrar on 16th August, 2012 who shall serve the defendants afresh and after completion of admission/denial of the documents would list the suit before Court for settling issues and directions for trial.
(PRADEEP NANDRAJOG)
JUDGE
(MANMOHAN SINGH)
JUDGE
JULY 10, 2012/ka
RFA(OS) 129/2010 Page 3 of 3

RESEARCH IN MOTION LIMITED VS DATA INFOSYS LIMITED

IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 373/2011
% Judgment dated 12.01.2012 RESEARCH IN MOTION LIMITED ..... Plaintiff Through : Mr. Sanjay Jain, Sr. Adv. with Ms.Charu
Mehta, Ms. Deepali and Ms. Prabsahay
Kaur, Advs.
versus
DATA INFOSYS LIMITED ..... Defendant Through : Mr. S.K. Bansal, Mr. Ajay Amitabh Suman and Mr.Keshav Ch. Thakur, Advs.
for defendants no.2 to 4.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL)
I.A.NO.6112/2011
1. Plaintiff has filed the present suit for injunction against infringement of copyright, infringement of trade mark, passing off, breach of contract, delivery up, damages and rendition of accounts. Along with the plaint, plaintiff has filed I.A.2476/2011 under Order XXXIX Rules 1 and 2 CPC for grant of ex parte ad interim injunction.
2. While issuing summons in the suit and notice in the application on 18.2.2011, this Court had passed an interim order, by which the only defendant, M/s Data Infosys Limited, was restrained from using, copying, reproducing and/or distributing any software application developed by using the SDK or BES software of the plaintiff till the next date of hearing. Defendant was also restrained from using the mark „Berry‟ as a part of its trademark or trade name or any other name similar to the plaintiff‟s trademark BlackBerry till the next date of hearing. Relevant portion of the order dated 18.2.2011 reads as under:
CS(OS) 373/2011 Page 1 of 25 "I.A.No.2477/2011
1. Allowed, subject to the plaintiff filing all the original documents relating to this case within its power and possession within 10 days.
2. The application stands disposed of.
CS(OS) 373/2011 and I.A.No.2476/2011
1. Issue summons in the suit and notice in application to the defendant by ordinary process, registered AD post as well as dasti, returnable on 24th May, 2011.
2. The plaintiff is a corporation incorporated under the laws of Canada. The plaintiff was founded in the year 1984 and claims to be the first wireless data technology developers in the world. The plaintiff is manufacturing and marketing wireless solutions for the mobile communications in the name of BlackBerry. The trademark BlackBerry was adopted by the plaintiff in the year 1999 and its wireless solution allows the users to stay connected with the wireless access to e-mails, corporate data, phone, web and organizer features. The plaintiff has incurred huge amount on research and development. The figures in this regard are given in para 10 of the plaint. The plaintiff also owns the copyright in the code, specifications, documentation and other materials in respect of BlackBerry Enterprise Server (BES) Software and Software Development Kit (SDK). The plaintiff‟s trademark BlackBerry is registered in Classes 9, 38 and 41. The registration numbers of the nine registrations of the plaintiff are given in para 16 of the plaint. The annual revenues of the plaintiff are given in para 17 of the plaint. The plaintiff is also owning various websites with the trademark BlackBerry forming part of its website. The plaintiff claims to have 55 million subscribers who are using the BlackBerry products and the services of the plaintiff throughout the world. As per the particulars given in para 23 of the application, the plaintiff claims the trademark BlackBerry to be well known within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
3. From the newspaper report dated 4th October, 2010 in the Hindustan Times, the plaintiff came to know that the defendant is offering BharatBerry services and software application whereupon the plaintiff investigated the matter and discovered the website
CS(OS) 373/2011 Page 2 of 25 www.bharatberry.com owned and managed by the defendant. The defendant is offering BharatBerry software which has all the features of the plaintiff‟s software. On further inquires, the plaintiff found that an employee/representative of the defendant, Mr. Nitin Walia had downloaded the plaintiff‟s proprietary SDK from the plaintiff‟s website on or before 28th September, 2010. By downloading the SDK, the defendant agreed to abide by the terms of the SDK licence agreement which explicitly prohibits the unauthorized use of the software. However, in violation of the terms of the SDK licence, the defendant developed, marketed and advertised the plaintiff‟s software under the name of BharatBerry by replicating the plaintiff‟s software.
4. According to the plaintiff, the defendant has infringed the plaintiff‟s copyright in the SDK software by unauthorizedly using the application without plaintiff‟s approval. Learned Senior Counsel for the plaintiff further submits that the defendant is using the name BharatBerry with both the „B‟ in capital like in BlackBerry and is also passing its services as that of the plaintiff. The defendant has also violated the terms of SDK licence and BBSLA by offering hosted BES services to their parties.
5. The plaintiff has made out a prima facie case for grant of ex- parte ad-interim injunction and this court is satisfied that unless the ex-parte ad-interim injunction is not granted, the plaintiff would suffer irreparably and the balance of convenience is also in favour of the plaintiff.
6. In the facts and circumstances of this case, the defendant is restrained from using, copying, reproducing and/or distributing any software application developed by using the SDK or BES software of the plaintiff till the next date of hearing. The defendant is also restrained from using the mark „Berry‟ as a part of its trademark or trade name or any other name similar to the plaintiff‟s trademark BlackBerry till the next date of hearing.
7. Order XXXIX Rule 3 of the Code of Civil Procedure be complied within two weeks.
8. The application is disposed of.
CS(OS) 373/2011 Page 3 of 25
3. In the application filed under Order XXVI Rule 9 CPC, on the same day, this Court while appointing two Local Commissioners to visit the premises of defendant at (i) Registered office Inside Jaipur Glass Factory, Tonk Road, Jaipur - 302018, Rajasthan; and (ii) Head Office at Station Road, Durgapura, Jaipur - 302018, Rajasthan, had issued following directions to the Local Commissioners:
(ii) The Local Commissioners shall prepare an inventory of the impugned software, packaging, advertising and other material on the aforesaid premises bearing trademark "BharatBerry" and/or "BlackBerry" or any deceptive variations thereof and after taking into custody, hand over the seized material on supardari to the defendant, after obtaining an undertaking that the defendant shall produce the same as and when required by this Court. The Local Commissioner shall also inspect the contents of Central Processing Units (CPUs), Compact or Floppy discs and/or any other storage media for the purposes of identification of the software in question and thereafter prepare mirror images or copies of the hard disc(s) containing such impugned software and seal the same in suitable packing material or container and deposit the same before this Court. The Local Commissioner shall also inspect and sign the books of accounts including cash books, purchase and sale records of the defendant which pertain to manufacture and sale of the infringing products.
(iii) The Local Commissioners shall take the assistance of the technical expert to be appointed by the plaintiff for the purpose of identification of the software and for preparing mirror images and copies of the hard disc(s) containing the software.
(iv) Two representatives of the plaintiffs are permitted to accompany the Local Commissioners to assist the
Local Commissioners for execution of the Commissions proceedings.
(v) The Local Commissioners shall visit the defendant‟s premises without giving prior notice to the defendants.
CS(OS) 373/2011 Page 4 of 25 (vi) The fee of the Local Commissioners is fixed at Rs.70,000/- each apart from travel, transport and out of pocket expenses. The Commission shall file their reports within three weeks.
4. Mr. Sanjay Jain, learned senior counsel for the plaintiff, submits that necessity for filing I.A.No.6114/2011 under Order I Rule 10(2) and Order VI Rule 17 CPC for impleading Bharat Berry Technologies Private Limited as defendant no.2, Mr. Ajay Data as defendant no.3 and Mr.Nitin Walia as defendant no.4, and I.A.NO.6112/2011, under Section 94(E) and Order XXXIX Rules 1 and 2 CPC praying that interim order granted by this Court on 18.2.2011 be extended against defendant‟s no.1 Directors, namely, Mr. Ajay Data, and Mr.Nitin Walia, and its sister concern/affiliate company Bharat Berry Technologies Private Limited, has arisen on account of the fact that defendants no.2-4 are closely connected with defendant no.1, Data Infosys Limited, against which the interim order dated 18.2.2011 was passed. Defendants no.2-4 initially were not made parties to the suit and taking advantage of this fact defendants no.2-4 are not only flouting and disobeying the order passed by this Court on 18.2.2011 but they have also filed a suit under Section 142 of the Trademarks Act against the plaintiff herein to gain unfair advantage and to over reach the order of this Court.
5. On 9.5.2011 while allowing I.A.NO.6114/2011 this Court had impleaded defendants no.2 to 4 as parties to the present suit and also passed an Order in I.A.No. I.A.NO.6112/2011 by which the interim order 18.2.2011 with regard to the software was extended to defendants no.2-4. Para 5 of the order dated 9.5.2011 passed in I.A.NO.6112/2011 reads as under: "5. The learned counsel for defendants No.2 to 4 is not able to explain his stand with respect to „SDK‟ and „BES‟. In that view of the matter, the interim order dated 18th February, 2011 relating to
CS(OS) 373/2011 Page 5 of 25 software „SDK‟ and „BES‟ is extended to defendants no.2 to 4. The extension of the order dated 18th February, 2011 relating to the use of BharatBerry by defendants No.2 to 4 shall be considered on the next date of hearing."
6. Learned senior counsel for the plaintiff submits that interim order dated 18.2.2011 with regard to use of the word BERRY be extended to defendants no.2-4 as well as all the defendants are closely connected with each other.
7. Mr. Jain further submits that after the interim order was passed, as directed by this Court, the Local Commissioners visited the Head Office of defendant no.1 company situated at Station Road, Durgapura, Jaipur - 302018, Rajasthan. The Local Commissioner met Mr.Ajay Data and Mr.Nitin Walia, CEO of defendant no.1 company. The senior counsel has highlighted the relevant portion of the report of the Local Commissioner wherein it has been observed as under:
(i) Ms. Charu Mehta (Counsel for the plaintiff) handed over a copy of the Court Orders along with a copy of the petition including the documents to the defendant (through Mr.Ajay Data) (paragraph 2);
(ii) Mr.Nitin Walia, Director of the company was also present there (paragraph 4);
(iii) The mark „bharat berry‟ (written in black in bold letters, bearing space between the two words, with strips representing the tricolor), appeared on the glass door(s) on entrance and the glass door(s) on further cabins (paragraph 15);
(iv) Mr.Nitin Walia stated that, as on date, the mark „bharat berry‟ has been used since October 2010 (paragraph 16);
(v) Mr.Walia states that the trade mark "Bharatberry" is being used on the website www.bharatberry.com
(paragraph 14)"
8. It is submitted that, during the execution of the Commission at the head
CS(OS) 373/2011 Page 6 of 25 office of the Respondent company (Station Road, Durgapura, Jaipur 302019, Rajasthan), the plaintiff‟s representative and the Local Commissioner, Mr.Vibhav Misra, met Mr.Ajay Data and Mr.Nitin Walia, CEO/directors/responsible officers of the defendant no.1 company. The Local Commissioner, Mr. Vibhav Misra, duly served the defendant no.1, through Mr.Ajay Data and Mr.Nitin Walia, with a copy of the Order and paperbook and such fact of service is recorded by the Local Commissioner in his report filed with this Hon‟ble Court.
9. Learned senior counsel for the plaintiff submits that plaintiff thereafter learnt that on 3.3.2011 a company known as BharatBerry Technologies Private Limited (BBTPL) filed a Civil Suit No.32/2011, inter alia, against the plaintiff and its subsidiary, Research in Motion India Private Limited, which was listed for hearing before the Court of Additional District Judge No.VII, Jaipur, Metro Jaipur. The suit filed at Jaipur did not disclose the factum of the present suit filed by the plaintiff in this Court and the order dated 18.2.2011 passed by this Court by which defendant no.1, inter alia, was restrained from using the word „Berry‟ as part of trademark/trade name of defendant no.1. BBTPL alleged in its suit filed at Jaipur that the plaintiff had issued threats to them on 2.3.2011 not to use the trademark/name BharatBerry of the plaintiff. On 3.3.2011 the Court at Jaipur issued notice to the plaintiff and its subsidiary for the very next day i.e. 4.3.2011 and fixed the matter for hearing at 12.00 Noon. The learned Court at Jaipur, it is alleged, ignored the fact that the plaintiff is having its office at Canada and its subsidiary is located at New Delhi and thus one day notice is no notice in the eyes of law. Besides there was no merit in the suit, which had been filed, and the object of filing the said suit at Jaipur was to defeat the injunction order granted by this Court on 18.2.2011.
CS(OS) 373/2011 Page 7 of 25
10. Learned senior counsel for the plaintiff submits that since the contesting defendants (plaintiff herein) did not appear on the next date of hearing i.e. 4.3.2011 before the Court at Jaipur, as they were not served, the learned Additional District Judge at Jaipur passed an ex parte injunction order, inter alia, restraining plaintiff and its subsidiary from allegedly interfering, causing impediments/obstructions or groundlessly threatening whether directly or indirectly vis-à-vis the business affairs of BBTPL in carrying on or continuing business in the name and style of „BharatBerry‟. As advised, plaintiff filed a writ petition, challenging the said order before the High Court at Rajasthan, which was disposed of in view of availability of the alternative remedy of appeal.
Upon receipt of the interim order from the Court at Jaipur, plaintiff started conducting enquiries with respect to BBTPL. Upon reading of the plaint, which was filed at Jaipur, plaintiff noticed that BBTPL had made numerous baseless allegations against the plaintiff and its subsidiary including that the plaintiff had visited the premises of BBTPL on 2.3.2011 and threatened BBTPL. Counsel further submits that the averment made by defendants no.2-4 in Para 10 of the plaint filed at Jaipur is a blatantly false statement as the Local Commissioners did not visit the premises of BBTPL, which is evident from the report of the Local Commissioner. Counsel next submits that in fact the plaintiff only visited the office of defendant no.1 and plaintiff was not even aware of the existence of BBTPL till that point of time. Upon further enquiries made by the plaintiff, plaintiff learnt from the records of the Registrar of Companies that BBTPL was incorporated on 21.12.2010 and is closely connected with defendant no.1, which had been injuncted by this Court from using the impugned trademark, namely, BHARATBERRY. Senior counsel for the plaintiff contends that plaintiff also learnt that Mr.Ajay Data and
CS(OS) 373/2011 Page 8 of 25 Mr.Nitin Walia are Directors/CEO/responsible officers/promoters of BBTPL and defendant no.1.
11. Elaborating his arguments further to show that defendant no.1 and Bharat Berry Technologies Private Limited are closely connected and they have common Directors/CEO/responsible officers/promoters, Mr. Jain submits that enquiries were made into the affairs of BBTPL, which reveal from the record of the Registrar of Companies that BBTPL was incorporated on 21.12.2010 and is closely connected with defendant no.1, which has been injuncted by this Court from using the impugned trade mark/name BharatBerry. Plaintiff also learnt that Mr.Ajay Data and Mr.Nitin Walia are Directors/CEO/responsible officers of BBTPL and defendant no.1. and in fact on account of the closeness of the two companies defendant no.1 had issued a no objection certificate to the Registrar of Companies stating that "With reference to the cited subject, our Company DATA INFOSYS LIMITED having its registered office at Inside Jaipur Glass Factory, Tonk Road, Jaipur (Rajasthan) hereby convey its „No Objection‟ for registration of the new Company Using the word "BHARAT BERRY". Original print out from the records of the Registrar of Companies of „No Objection Certificate‟ issued by defendant no.1 has been filed as a document vide List of Documents dated 19.4.2011. Senior counsel also contends that the certificate issued by Data Infosys Limited would show a close connection between Data Infosys Limited and BBTPL otherwise there would be no occasion for one company to allow another company the use of its name. It has further been argued by learned senior counsel for the plaintiff that the two companies belong to the same person, who are acting in connivance with each other, and both - Mr.Ajay Data and Mr.Nitin Walia - were present at the premises of defendant no.1 during the execution of the Commission by the Local Commissioners; they were
CS(OS) 373/2011 Page 9 of 25 handed over a copy of the order passed by this Court on 18.2.2011; and they were aware that the use of the word BharatBerry had been injuncted by this Court by an order dated 18.2.2011.
12. Learned senior counsel for the plaintiff has drawn the attention of the Court to the fact that the website prior to the order dated 18.2.2011 passed by this Court showed "website designed and managed by Team Date Infosys Limited" and the same website now states "website designed and managed by Bharat Berry Technologies Pvt. Ltd.". Senior counsel further submits that the domain name www.bharatberry.com is owned and controlled by defendant no.1, which would show a direct nexus between defendant no.1, BBTPL, Mr.Ajay Data and Mr.Nitin Walia. It would further show that Mr.Ajay Data and Mr.Nitin Walia are the main persons behind all the activities of defendant no.1 and BBTPL. It is also submitted that BBTPL and defendants are closely related companies having common Directors/Officers and both - Mr.Ajay Data and Mr.Nitin Walia - under the garb of the new company BBTPL are violating the order dated 18.2.2011 passed by this Court.
13. Learned senior counsel for the plaintiff further submits that statement of Mr.Rakesh Mamnani, who was working as Legal Officer with Data Infosys Limited since March, 2009, was recorded in Court on 21.4.2011. In the said statement it has been deposed by Mr.Rakesh Mamnani, inter alia, that Mr. Nitin Walia is the Director of Data Infosys Limited, the office of BharatBerry Technologies Private Limited is situated at D-47, Laxaman Marg, Hanuman Nagar, Vaishali Nagar, Jaipur. Mr. Ajay Data, Mr. Deepak Data and Mr.Nitin Walia are the Directors of BharatBerry Technologies Pvt. Ltd. and he was also looking after the affairs of BharatBerry Technologies Private Limited. Mr.Rakesh Mamnani further deposed that the suit at Jaipur was instituted under his signatures and he
CS(OS) 373/2011 Page 10 of 25 had signed and verified the plaint, whereas Mr.Nitin Walia had signed and verified the written statement in the present suit. The Legal Officer of Data Infosys Limited further stated that the Board of Directors of BBTPL took the decision to file a case at Jaipur in the meeting of the Board of Directors held on 3.3.2011 at 10:00 o‟clock, when he was present. He also deposed that he was aware on 3.3.2011 when the Board meeting took place that an injunction order had been passed by this Court and the Local Commissioners had conducted their proceedings on 2.3.2011. Mr. Jain contends that the statement of Sh.Rakesh Mamnani further leaves n o room for doubt about the fact that both Mr.Ajay Data and Mr.Nitin Walia are running defendant no.1 and defendant no.4.
14. Learned senior counsel for the plaintiff contends that with a view to continue their illegal activities and circumvent the order dated 18.2.2011 passed by this Court, defendant no.1 simply shifted the impugned operations of their company, Data Infosys Limited, to be run under BBTPL, which was a newly formed company, completely under their control and share holding. Despite, being aware of the pendency of the civil suit and the injunction order having been passed by this Court, Mr.Ajay Data and Mr. Nitin Walia, as share holders and/or Directors of BBTPL, initiated and filed a false civil suit before the Court of Additional District Judge, Jaipur, by willfully suppressing the order dated 18.2.2011 on the false pretext of receiving threats from the plaintiff. Counsel further contends that Mr.Ajay Data and Mr.Nitin Walia would have come to know about the injunction order only from the Local Commissioners only a day before filing the suit at Jaipur, as the plaintiff had made no direct or indirect contact with them, nor the plaintiff was aware of the new company BBTPL. Counsel next contends that defendant no.1 is continuing to commit breach of the order dated 18.2.2011 in connivance
CS(OS) 373/2011 Page 11 of 25 with defendants no.2-4 by running its website www.bharatberry.com, which was de-activated upon receipt of the order dated 18.2.2011 and all references to defendant no.1 stands replaced with BBTPL.
15. On the merits, Mr.Jain submits that the plaintiff is a corporation incorporated under the laws of Canada. The plaintiff was founded in the year 1984 and claims to be the first wireless data technology developers in the world. The plaintiff is manufacturing and marketing wireless solutions for the mobile communications in the name of BlackBerry. The trademark BlackBerry was adopted by the plaintiff in the year 1999.
16. Counsel for the plaintiff also submits that large sums of money is spent in maintaining and protecting the fruits of its labour and efforts in the form of intellectual property the world over. The plaintiff‟s intellectual properties and technologies are statutorily protected around the world including by way of trade mark, copyright, patent and design protection. The plaintiff‟s proprietary (i) BES software primarily designed to integrate and synchronize email servers with BlackBerry smartphones and (ii) software development tools made available in the form of the SDK, comprising the source code and object code used to program and compile applications for BlackBerry smartphones, qualify for protection as „original literary works‟ as contemplated under Section 2(o) and Section 13 of the Copyright Act, 1957 and enjoy copyright protection. Such software is made available to consumers and developers either along with the smartphone or on a standalone basis under the terms of various user licences. Before one can use this software, one has to accept the terms of the respective licence agreements and abide by such terms. The plaintiff owns copyright in the code, specifications, documentation and other materials that comprise the BES software and SDK. Both India and Canada are signatories to the Berne Convention and thus works first
CS(OS) 373/2011 Page 12 of 25 published in Canada are entitled to protection in India as well. Such protection is available under Section 40 of the Copyright Act and by virtue of the International Copyright Order passed by the Indian Government, whereunder the works first published in the convention countries mentioned in the Schedule to the Copyright order are protected and all the provisions of the Copyright Act, except in Chapter VIII relating to the rights of broadcasting organizations and of all performers, apply to any work first made or published in such countries in like manner as if the work was first published in India. Therefore, all the software products of the plaintiff are entitled to protection in India as literary works and the plaintiff is entitled to take action for infringement of its copyright in such literary works and obtain relief from the Court as provided under the Copyright Act. The plaintiff owns a global portfolio of Blackberry and BlackBerry formative trade marks including the trade mark BlackBerry. The plaintiff has secured more than 2000 registrations of BlackBerry and BlackBerry formative marks in 160 jurisdiction around the world. Copies of a selection of relevant registration certificates obtained in various countries around the world including the commonwealth countries have been filed along with the Plaint.
17. It is also contended that with respect to India, the plaintiff has obtained the registration of BlackBerry and plaintiff has made its trademark in various classes, the example of which have been set out in the plaint. The strong global sales for its products and the extent and use and popularity of the plaintiff‟s BlackBerry trademark, is evident from the fact that there are more than 55 million subscribers using the BlackBerry products and services of the plaintiff throughout the world.
18. Mr.Jain, learned senior counsel for the plaintiff has drawn the attention of the court to the plaintiff‟s revenue recorded in US$, which are reproduced
CS(OS) 373/2011 Page 13 of 25 as under:
a. $ 1 billion for the fiscal year 2005
b. $ 2 billion for the fiscal year 2006
c. $ 3 billion for the fiscal year 2007
d. $ 6 billion for the fiscal year 2008
e. $ 11 billion for the fiscal year 2009
f. $ 15 billion for the fiscal year 2010"
19. Mr.Jain also contends that plaintiff has a significant presence in Indian market and its products under the trademark BlackBerry are extensively available in the Indian market especially through relationships with Bharti Tele- Services Limited (which operates under its trade mark "AIRTEL"), Vodafone (India), Aircel, BSNL, Idea Cellular and various other operators.
20. Counsel for the plaintiff submits that while granting interim ex parte injunction this court had considered the above factors and the submissions made by counsel for the plaintiff. Mr.Jain has strongly urged before this court that having regard to the facts of this case and having regard to the conduct of the defendants No.2 to 4, the interim order granted on 18.02.2011 should be extended so that the defendants No.2 to 4 cannot take advantage of their own wrongs in frustrating the order passed by this court. It is further urged before this court that even prior to a detailed hearing in the application under Order 39 Rules 1 and 2 and the application under Order 39 Rule 4 CPC, the interim order should be extended to defendants No.2 to 4, failing which a wrong signal would be sent to such litigants, who by adopting sharp practices want to over-reach orders of the court.
21. Mr.S.K. Bansal, counsel for defendants has primarily raised three objections with regard to extending interim order to defendants No.2 to 4. Firstly Mr.Bansal contends that the plaintiff has not approached this court
CS(OS) 373/2011 Page 14 of 25 with clean hands, as the plaintiff has suppressed and withheld material facts. The plaintiff has wilfully suppressed the disclaimer on the registration certificate with regard to the word „Berry‟. It is contended that on this ground alone the suit should be dismissed and the interim order dated 18.02.2011 should be vacated. Secondly, the plaintiff has failed to comply with a direction of this court by which the parties were called upon to file copies of their software on record. Mr.Bansal, counsel for defendants submits that while the defendants have complied with the order, plaintiff has not filed the software till date. The third objection raised by Mr.Bansal, counsel for the defendants is that there are large number of persons in the market, who are using the suffix „Berry‟ and thus the plaintiff cannot have any monopoly on the said work „Berry‟.
22. Elaborating his first argument Mr.Bansal submits that plaintiff has failed to state in the plaint that the registration of the plaintiff with regard to the word BlackBerry was with a disclaimer. This is a material fact which has been suppressed in the plaint and during the course of hearing of the interim application. In support of this submission counsel for the defendants has placed strong reliance in the case of Om Prakash Gupta v. Parveen Kumar and Anr., reported at 2000 PTC 326, wherein a Single Judge has considered various judgments and held that concealment of material facts or documents, making any misrepresentation in court, has been seriously viewed by the Court. Relevant portion of the judgment at pages 333-334, are reproduced below:
"As seen above, the trademark was registered subject to disclaimer that this registration shall give no right to the exclusive use of the device of 'Sun' and the word "SURAJ". This means that the word "SURAJ" and the device of Sun do not form part of the registered trademark. And the registered trademark is only "Zafrani Patti".
CS(OS) 373/2011 Page 15 of 25
17. Section 17 of the Act reads as under :
"17. Registration of trade marks subject to disclaimer.--
(a) contains any part --
(i) which is not the subject of a separate application the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor was a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character;
the Tribunal, in deciding whether the trade mark shall be entered or shall remain, on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the Tribunal holds him not to be entitled, or make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration :
Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made."
Similar provision existed in Section 13 of the earlier Trade Marks Act, 1940. The object and purpose for imposing disclaimer has been explained by the Supreme Court in the case of Registrar of Trade Marks v. Ashok Chandra Rakhit AIR 1955 SC 558 as under:
"8. The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks."
Disclaimed part(s)/matter of the registered trademark does not form part of the registered trademark and as such is not entitled to the benefits available in respect of a registered trademark."
CS(OS) 373/2011 Page 16 of 25
23. Elaborating upon the second submission Mr.Bansal contends that large number of persons in the market are using the suffix BERRY including Burberry, which has a registration under Clause 9 for the use of mobile case as well. Mr.Bansal, counsel for the defendants has drawn attention of the court to the search report conducted by him in this regard to show the various names with the suffix BERRY.
24. Mr.Bansal further contends that a mere glance of the getup of the two marks would show that there is absolutely no similarity and the writing style is completely distinct and different and no person can be mislead. Counsel has relied upon Hindustan Sanitaryware & Industries Litd. v. Champion Ceramic, reported at 2010 (45) PTC 260 (Del.) and J.K. Oil Industries v. Adani Wilmar Limited, reported at 2010 (42) PTC 639 (Del.).
25. In response to the submissions made by Mr.Bansal, counsel for the defendant, Mr.Sanjay Jain, learned senior counsel for the plaintiff, submits that the allegation of suppression are baseless and unfounded as the plaintiff has filed copies of all the registration certificates in favour of the plaintiff and only in one registration certificate there is a disclaimer with regard to the word „Berry‟ and thus it cannot be said that the plaintiff has intentionally and willfully suppressed the disclaimer from this court. It is further submitted that having regard to the fact that there is disclaimer only in one registration the defendant cannot derive any benefit.
26. While relying on the judgment in the case reported in the case of Cadbury India Limited and Ors. v. Neeraj Good Products reported at 142 (2007) DLT 724, Mr.Jain, learned senior counsel for the plaintiff submits that the injunction order can be passed on the basis of the registration certificate in which there is no disclaimer. Para 68 of the judgment reads as under:
CS(OS) 373/2011 Page 17 of 25 "68. There is no dispute that the registration of the plaintiff which have been granted to the plaintiff bearing No. 249360 on 20th May, 1968 in Class 30 for CADBURY MILK
CHOCOLATES GEMS '(Word)' contained the disclaimer on the exclusive right to use 'GEMS'. On the registration bearing No. 249841, there is an additional disclaimer regarding the use the device of tablets. However, it is undisputed that the plaintiff No. 1 has a registration dated 21st September, 1973 in respect of 'CADBURY's GEMS' Label bearing No.
291026 in Class 30 on which there is no such disclaimer. I find force in the submissions of the plaintiff that by this registration alone, the plaintiff is entitled to maintain an action for infringement of trademark against the defendant if it establishes that the defendant is dishonestly using a mark which is similar to the plaintiff's registered mark."
27. As far as the submissions made by counsel for the defendants with regard to non-filing of the software is concerned, Mr.Jain submits that the software was sent to the expert for its opinion and only for this reason there has been delay in filing copies of the software. With regard to the third submission made by Mr.Bansal, Mr.Jain, counsel for the plaintiff submits that placing reliance on the search report can be of no aid, help and assistance to the defendants, as almost all the registrations do not pertain to mobile phones except Burberry which primarily deals with accessories and not with respect to the mobilephones. Mr.Jain also submits that with respect to the other users, the products and services are different and there is no phonetic and any other similarity in the mark as in the present case.
28. I have heard learned senior counsel for the plaintiff and also learned counsel for the defendant. Ordinarily the submission made by learned counsel for the defendant that all pending applications including the application filed by defendants under Order XXXIX Rule 4 CPC should be heard and disposed of by a composite order would no doubt be the
CS(OS) 373/2011 Page 18 of 25 correct manner of dealing with this application. But the facts of this case and the manner in which the newly added defendants no.2 to 4 have successfully defeated the interim order passed by this Court on 18.2.2011 till date requires I.A.No.6112/2011 to be heard and taken up at the very first opportunity available and on account of paucity of time it is not possible to take up all the applications today and having regard to the conduct of defendants no.2-4 and to meet the ends of justice I deem it appropriate to take up I.A.No.6112/2011.
29. This matter had come up for hearing before this Court on 14.12.2011. Learned counsel for the plaintiff had pressed hearing of this application but in view of the fact that the suit filed by defendants no.2 to 4 was pending in the Court at Jaipur, this court was not inclined to hear the matter. At that stage, Mr. Jain had pointed out that plaintiff had visited Jaipur at least 15 dates to bring to the notice of the Court that the present suit had been filed earlier in point of time and also the fact that Directors of defendant no.1 and defendant no.2 were common and in fact one and the same persons. On account of the conduct of defendants no.2 to 4 the matter could not attain finality, however, having regard to the judicial discipline, this Court adjourned the matter to 10.1.2012. As a word of caution the Court observed that the submissions made by Mr. Jain would be considered on the next date even if the final order was not passed by the Additional District Judge at Jaipur. When the matter was listed on 10.1.2012, this Court was informed that the matter was listed for pronouncement at Jaipur and only thereafter arguments were heard on behalf of counsel for the plaintiff on the application. This Court was also informed today before hearing commences that the interim application of defendants no.2 to 4 has been dismissed and the matter has been adjourned to 21.1.2012 for passing an order on an application filed by
CS(OS) 373/2011 Page 19 of 25 plaintiff herein for dismissal of the suit under Order VII Rule 11 CPC read with Section 142(2) of Trade Marks Act. Pursuant to the orders passed by this Court on 18.2.2011 two Local Commissioners, who were appointed visited the office of defendant no.1. The report of the Local Commissioner clearly shows that the Local Commissioner did not visit the office of defendant no.2. Prima facie it seems that defendant no.2 had made this averment in the plaint filed in the Court at Jaipur only with a view to mislead the Court at Jaipur that the Local Commissioner along with the representative of the plaintiff had visited the office of defendant no.2 and threatened defendant no.2, which led to the filing of the suit by them under Section 142 of Trade Marks Act.
30. I have carefully perused the pleadings and documents on record and the statement recorded in court of Mr.Rakesh Mamnani, Legal Officer of defendant No.1. Statement of Mr. Rakesh Mamnani reads as under:
"Statement of Rakesh Mamnani, s/o Shri Ghanshyam Das Mamnanz, aged 31 years, r/o Mamnani Kunj, Plot No.644/6, 12 th B Road, Sardarpura, Sodhpur -343003 (on S.A.)
1. I am working as Legal Officer with Data Infosys Limited since March, 2009. My office is at Station Road, Durgapura, Jaipur. Mr. Babu Lal Data, Mr. Deepak Data, Mr. Nitin Walia, Mr. Mukesh Gupta, Mr. M.L. Oswal and Ms. Ritika Data are the Directors of Data Infosys Limited.
2. The office of BharatBerry Technologies Pvt. Ltd. is at D-47, Laxaman Marg, Hanuman Nagar, Vaishali Nagar, Jaipur. Mr. Ajay Data, Mr. Deepak Data and Mr. Nitin Walia are the Directors of BharatBerry Technologies Pvt. Ltd. I am also looking after the affairs of BharatBerry Technologies Pvt. Ltd.
3. The suit filed by BharatBerry Technologies Pvt. LTd. at Jaipur has been instituted by me on behalf of BharatBerry Technologies Pvt. LTd. I have signed and verified the plaint.
CS(OS) 373/2011 Page 20 of 25
4. Mr. Nitin Walia had signed and verified the written statement filed in this case.
5. I was not present in the office of Data Infosys Limited when the Local Commissioner visited on 2nd March, 2011. I was on leave on that day. I came to know of the inspection of the Local Commissioner after one day, i.e., on 3rd March, 2011.
6. The Board of Directors of BharatBerry Technologies Pvt. Ltd. took the decision to file the case at Jaipur. The meeting of the Board of Directors took place on 3rd March, 2011 at the office of Laxaman Marg, Hanuman Nagar, Vaishali Nagar, Jaipur at 10:00 o‟clock. I was present in the meeting in which the decision was taken to file the suit at Jaipur. The Board resolution was also passed in the meeting. I can produce the Board resolution before this Court.
7. I was aware on 3rd March, 2011 when the Board meeting took place that an injunction order has been granted by this Court and the Local Commissioner proceedings of 2nd March, 2011.
8. I do not know whether Data Infosys Limited and BharatBerry Technologies Pvt. Ltd. are using Software Development Kit (SDK) or BlackBerry Enterprise Server (BES) software of the plaintiff. I will find out from the technical department and will also produce the relevant records in this regard on the next date of hearing."
31. Before dealing with the submissions made by Mr.Bansal on merits, the facts of this case would unfold the conduct and manner in which defendant Nos.2 to 4 have successfully defeated and violated interim orders passed by this court on 18.02.2011, only on the ground that they were not specifically arrayed as parties to the present suit. The facts would also show that once the defendants No.2 to 4 who are closely connected with defendant no.1 became aware of the interim order dated 18.02.2011 passed by this court, they successfully frustrated the interim
CS(OS) 373/2011 Page 21 of 25 order by filing a suit under Section 142 of the Trade Marks Act in the Court of Additional District Judge No.VII, Jaipur, Metro Jaipur.
32. Based on the documents placed on record and the submissions made by Mr.Jain, senior counsel for the plaintiff, and upon the statement made by Mr.Rakesh Mamnani, the following undisputed facts would show that: (i) defendants no.1 and 2 are closely connected with each other. Mr.Ajay Data and Mr.Nitin Walia are Directors/CEO/responsible officers of BBTPL and defendant no.1;
(ii) at the time when the Local Commissioners visited the office of defendant no.1, Mr.Ajay Data and Mr.Nitin Walia were present. This is evident from the report of the Local Commissioner;
(iii) Copy of the order dated 18.2.2011 was handed over to Mr.Ajay Data and Mr.Nitin Walia, which was duly received by them. This is evident from the report of the Local Commissioner and thus both Sh. Ajay Data and Mr.Nitin Walia had knowledge of the Interim Order passed by this Court.
(iv) No Objection Certificate, which was issued by defendant no.1 to Registrar of Companies, giving its no objection for registration of the new company using the word Bharat Berry. The fact shows the closeness of the two companies. This is evident from the copy of No Objection Certificate filed by defendants with its list of document son 19.4.2011; (v) On receipt of copy of the summons and injunction order dated 18.2.2011 Mr.Ajay Data and Mr.Nitin Walia
conducted a meeting of Board of Directors of defendant no.2
CS(OS) 373/2011 Page 22 of 25 and took a decision to file a suit at Jaipur. This is evident from the statement made by Mr.Rakesh Mamnani on
21.4.2011;
(vi) The statement of Mr.Rakesh Mamnani, legal officer of Data Infosys Limited also reveals that Mr.Nitin Walia is the Director of defendants no.1 and 2;
(vii) Mr.Nitin Walia has signed and verified the written statement in the present case; and
(viii) Prior to order dated 18.2.2011 passed by this Court the website of defendant no.1 read as "website designed and managed by Team Date Infosys Limited" and the same website after passing the order dated 18.2.2011 the website read as "website designed and managed by Bharat Berry Technologies Pvt. Ltd. and the domain name www.bharatberry.com is owned and controlled by defendant no.1.
33. The statement of Mr.Rakesh Mamnani, Law Officer, which is reproduced above would show that soon after Local Commissioner visited the office of Data Infosys Limited and handed over a copy of the injunction order, the Board meeting of defendant no.2 was called on 3.3.2011 at 10.00 a.m. and it was decided to institute the suit had Jaipur. The Law Officer who signed and verified the plaint with regard to the suit to be filed at Jaipur and also stated in the statement that when the Board meeting took place he was aware of the injunction order having been passed and the proceedings of the Local Commissioner on 2.3.2011. Both Mr. Ajay Data and Mr. Nitin Walia were also present at the time when the Local Commissioner visited the office of defendant no.1. Having regard to the peculiar facts of this case and the manner in which defendants no.2-4 have
CS(OS) 373/2011 Page 23 of 25 conducted themselves, I deem it appropriate to extend the injunction order against defendants no.2-4 before hearing the applications at the earliest date possible. At this stage, this order is necessary to be passed at the earliest opportunity available. To meet the ends of justice and with regard to the manner the proceedings have been conducted by defendants no.2 to 4, defendants no.2 to 4, their servants, agents, employees, persons, sister concerns, assignees, are restrained from using the mark Berry as part of their trade mark/name or any other name similar to the plaintiff‟s trade mark „BlackBerry‟ till the next date of hearing.
34. Even on the merits of matter, prima facie, I am of the view that there is no suppression of facts by the plaintiff as merely because in one of the registrations there is a disclaimer, it would be of little or no consequence as there are subsequent registrations in favour of the plaintiff where there is no disclaimer. I am in respectful agreement with the view expressed by this Court in the case of Cadbury India Limited and Ors. (supra). I also find no force in the submission made by learned counsel for the defendants that since the software has not been filed by plaintiff on this ground alone the injunction order should be vacated, as the explanation rendered by Mr.Jain is cogent that the software has been sent for expert opinion and the matter is taking time. There is also no merit in the submission made by learned counsel for the defendants that there are many players in the market, who are using the suffix BERRY, for the reason that the names have no phonetic similarity and the products are entirely different. As far as Burberry is concerned, it is primarily a clothing company and it does not deal in mobile phones. The submission made by Mr.Bansal shall be considered at length when the applications under Order XXXIX Rules 1 and 2 CPC and Order XXXIX Rule 4 CPC are heard in detail.
CS(OS) 373/2011 Page 24 of 25
35. Prima facie the plaintiff has been able to make out a strong case on merits on the basis of which the injunction order was granted on 8.2.2011 and for the reasons stated above, the order dated 8.2.2011 is extended to newly added defendants no.2-4. Prima facie, I am also of the view that defendants have willfully violated the order dated 8.2.2011 passed by this Court as they were well aware of the fact that defendant no.1 had been injuncted from using the software and the mark BERRY. Being common Directors, defendants no.2-4 circumvented the order dated 8.2.2011 passed by this Court by conducting business in their pocket company, defendant no.2. Defendants have interfered in the administration of justice and they have willfully disobeyed the order passed by this Court on 18.2.2011. Defendants no.3 and 4 shall show cause as to why contempt proceedings be not initiated. Defendants no.3 and 4 are also directed to remain present in Court on the next date of hearing.
36. I.A.NO.6112/2011 stands disposed of.
CS(OS) 373/2011, I.A.NOS.2476/2011, 2478/2011, 7578-79/2011
37. List on 7.2.2012.
G.S.SISTANI,J
JANUARY 12, 2012