Delhi High Court - Orders
Pandrol Limited & Anr vs Patil Rail Infrastructure Pvt. Ltd. & ... on 2 September, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~18
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 602/2022
PANDROL LIMITED & ANR. ..... Plaintiffs
Through: Mr. Rajshekhar Rao, Senior Advocate
with Ms. Archana Sahadeva and Ms. Mansi Sood,
Advocates.
versus
PATIL RAIL INFRASTRUCTURE PVT. LTD.
& OTHERS ..... Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 02.09.2022
I.A. 14103/2022 (Exemption)
1. Subject to the Plaintiffs filing clearer copies of the documents with proper margins, which they may seek to place reliance on, within four weeks from today, exemption is granted.
2. Application is allowed and disposed of.
I.A. 14104/2022 (Section 12(A) of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)
3. Present application has been preferred on behalf of the Plaintiffs seeking exemption from instituting pre-litigation mediation in accordance with Section 12A of the Commercial Courts Act, 2015.
4. Present suit has been instituted by the Plaintiffs seeking to restrain the Defendants from acts of infringement of the Plaintiffs' copyright in drawings pertaining to 'Pandrol Double Resilient Baseplate Assembly System' (DRBAS) and the registered trademark/trade name PANDROL.
Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 1 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:365. It is the case of the Plaintiffs that Plaintiff No. 1 developed DRBAS and created detailed industrial drawings of the system in 2010. Subsequently, in 2021 the re-engineered version of DRBAS with drawing No. 21166 was approved by the Ministry of Railways. The drawings have been created and developed after expending enormous amount of money, resources, labour and skill and the copyright in the said drawings vests in the Plaintiffs.
6. It is the case of the Plaintiffs that they have learnt through credible sources that Defendants have copied their drawings in toto including the trademark PANDROL and are using the same for participating in various tenders misrepresenting to the Authorities.
7. In my opinion, Plaintiffs have made out a case to seek exemption from pre-litigation mediation on account of the urgency of the reliefs sought.
8. Accordingly, the application is allowed and Plaintiffs are exempted from instituting pre-litigation mediation in accordance with Section 12A of the Commercial Courts Act, 2015.
9. Application is disposed of.
I.A. 14102/2022(seeking leave to file additional documents)
10. Present application has been preferred on behalf of the Plaintiffs seeking leave to file additional documents under Order 11 Rule 1(4) CPC.
11. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
12. Application is allowed and disposed of.
I.A. 14101/2022(exemption from advance service to Defendants)
13. Since there is an urgency in the matter and the same is being heard Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 2 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 today, Plaintiffs are exempted from serving advance notice on Defendants.
14. For the reasons stated in the application, the same is allowed and disposed of.
CS(COMM) 602/2022
15. Let plaint be registered as a suit.
16. Upon filing of process fee, issue summons to the Defendants, through all permissible modes, returnable on 29.11.2022 before the learned Joint Registrar.
17. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents filed by Plaintiffs.
18. Replication be filed by the Plaintiffs within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/ denial of documents filed by the Defendants, shall be filed by the Plaintiffs.
19. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 14099/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiffs)
20. Present application has been preferred by the Plaintiffs under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.
21. Issue notice to the Defendants through all prescribed modes, returnable on 13.12.2022, before Court.
22. It is averred that Plaintiff No. 1, founded in 1937, is the global rail fastenings and track elasticity solutions leader with more than 1.4 Billion products in service in over 100 countries and has its headquarters in the Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 3 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 United Kingdom. Plaintiff No. 2 is a joint venture between Plaintiff No. 1 and Rahee Industries Ltd., a leading integrated rail road company based out of India. Defendant No. 1 is a company dealing inter alia in Railway Track Engineering and Defendants No. 2 to 5 are its employees, collectively referred to as Defendants hereinafter.
23. It is further averred that the trademark PANDROL was adopted by Plaintiff No. 1's predecessor-in-interest in the year 1964 and subsequently, on 24.06.1970, the trademark was also adopted as a trade name/corporate name of Plaintiff No. 1. The trademark was registered in class 06 in 1964 and has been in use, in the course of trade, continuously ever since. The trademark registrations exist in multiple classes viz. 06, 17, 19, etc. for products and services involved in the rail industry, ranging from rail fastening of metal, rail laying machines and others. The registrations are valid and subsisting. The trademark is also registered internationally in favour of Plaintiff No. 1 in multiple jurisdictions such as Canada, Brazil, USA etc. Products and services provided by the Plaintiffs under the trademark PANDROL have garnered widespread recognition being synonymous with quality, safety and trust and Plaintiffs have earned various awards over the years.
24. It is stated that Plaintiff No. 1, which is involved in manufacturing and supply of Rail Fastening Systems etc., through its own R&D, Innovation, application of know-how, has developed the Pandrol Double Resilient Baseplate Assembly System (PDBRA), which is a railway track fastening system used to fasten railway tracks used in metro rails. In order to participate and supply the PDBRA to various rail authorities across the country, Plaintiff No. 1 created detailed drawings of its system in the year Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 4 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 2010, bearing in mind the requirements of the railways as well as the fact that the system is a safety-critical product and has to be designed and developed with technical know-how and credibility. Considerable skill, labour, time and monetary resources were expended to develop the system. The drawings etc. developed by Plaintiff No. 1 were duly examined and having been found compliant with the Performance Criteria of Fastening System for Ballastless Track, were approved by the Ministry of Railways in 2011. Since then, Plaintiffs have successfully participated in various tenders floated by Metro and other railway organisations.
25. It is stated that the drawings of Plaintiff No. 1 for its PDBRA, details whereof are mentioned in the plaint form part of Pandrol's copyrighted work. The drawings were first published in United Kingdom in 2010 and were created by its employees in the course of their employment and thus constitute 'artistic works'. Plaintiff No. 1 is thus the first owner of the copyright in the said drawings and is entitled to protection by virtue of Section 40 of the Copyright Act, 1957 read with International Copyright Order, 1999.
26. Present suit has been instituted seeking to restrain the Defendants from infringement of Plaintiffs' copyright in the drawings pertaining to PDBRA System and the registered trademark/trade name PANDROL. It is the case of the Plaintiffs that Defendants have copied the drawings of the Plaintiffs in toto in which the copyright vests. Plaintiffs have placed on record a comparative of the scanned copies of their drawings and the impugned drawings, which is placed below for ready reference:-
Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 5 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36Plaintiffs' Drawings Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 6 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 Defendants' Drawings Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 7 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36
27. Plaintiffs have also brought out the similarities in the competing packages of the product in question which is as follows:-
Sr. PLAINTIFFS' DRAWINGS IMPUGNED DRAWINGS
No.
1. All the drawings pertaining to All the drawings pertaining to
the rail fastening system have the rail fastening systems have
been copied in toto. been copied in toto.
2. Plaintiffs' drawings contain the The Plaintiffs' registered trade
Plaintiffs' registered trade mark mark PANDROL are clearly
PANDROL on the said drawings visible on the Impugned
pertinently in Drawing No. Drawings, pertinently in
13145. Drawing No. 13145.
3. The drawings are specifically The Impugned Drawings
numbered by Plaintiff No. 1 and blatantly use the Plaintiffs' for which Plaintiff No. 2 had Drawing numbers as is.
sought and obtained requisite approvals from the MoR.
4. The drawings were created by Admittedly, the Impugned Plaintiff No. 1 in the year 2010. Drawings were purported created by the Defendants on June 06, 2022.
28. It is averred that through credible sources, Plaintiffs have learnt that recently in a tender issued by Madhya Pradesh Metro Rail Corporation Limited, Defendants have participated using Pandrol's copyrighted work and have also used the trademark PANDROL which is clearly visible on the impugned drawings, with a view to mislead the Authorities into believing that the drawings submitted by the Defendants are approved by the Ministry of Railways, which is a pre-requisite for participating in the said tenders.
Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 8 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:3629. It is the contention of learned Senior Counsel for the Plaintiffs that Defendants have infringed the copyright of the Plaintiffs by copying the designs which by a bare look are mirror images of each other. By using the trademark PANDROL for which Plaintiff No. 1 is a registered proprietor in various classes such as 06, 07, 40, 42 etc., Defendants have infringed the Plaintiffs' statutory rights under Section 29 of the Trade Marks Act, 1999.
30. It is further contended that Plaintiffs' trademark PANDROL is unique and distinctive and has acquired distinctiveness and immense goodwill with time. Plaintiff No. 1 is the prior and original adopter of the said trademark. Defendants have deliberately used the trademark on the impugned drawings to depict a false association with the Plaintiffs, when no such association exists, in order to encash on the goodwill and reputation of the Plaintiffs. There is no plausible explanation for adoption and use of the Plaintiffs' copyright work and its registered trademark but to cause confusion and deception and make illegal gains. Plaintiffs and Defendants' products/ services are being offered to the same customer base through identical trade channels and not only are the acts of Defendants resulting in tarnishment of the Plaintiffs' reputation and blurring of its trademark but the larger concern is also of public interest. Plaintiff No. 1 has expended skill and hard work into researching and developing the assembly systems, after taking into consideration multiple factors such as meeting codal provisions and related fastening specifications such as CEN Standards, Indian Codes, Climatic conditions, durability etc. and the industrial drawings are prepared with great accuracy and technical know-how, considering the nature of the product and the safety of millions of people who travel through rails and the Defendants Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 9 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 ought to be injuncted from using these drawings to their benefit and in violation of statutory and common law rights of the Plaintiffs.
31. Having heard learned Senior Counsel for the Plaintiffs, this Court is of the view that Plaintiffs have made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiffs and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
32. Accordingly, Defendants, their directors, executives, partners, proprietors, principal officers, assignees, family members and anyone acting for and on their behalf are restrained from:
a. directly or indirectly copying, reproducing, storing, using, publishing, advertising Pandrol's Copyrighted Work, i.e. drawing numbers 13145, 13146, 14613, 14614, 5720, 8605, 8604, 12683, 12740, 2759, 12717, 12791, 10108, 21166, in any manner that may result in infringement of the Plaintiff's copyright subsisting in the said drawings; b. using, applying, manufacturing and selling, offering for sale, advertising or promoting the unauthorized usage of the PANDROL trade mark, or any other mark which is either identical to or deceptively similar to the Plaintiff's registered trade mark 'PANDROL' causing infringement of the registered trade mark and passing off in respect of any products whatsoever.
33. Plaintiffs shall comply with the provisions of Order 39 Rule 3 CPC within a period of one week from the date of execution of the local commission.
Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 10 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36I.A. 14100/2022 (for appointment of Local Commissioner)
34. Present application has been preferred by Plaintiffs under Order 26 Rule 9 read with Order 39 Rule 7 and Section 151 CPC, seeking appointment of a Local Commissioner.
35. Upon hearing, the application is allowed.
36. Accordingly, Mr. Gajendra Giri, Advocate (Mobile No. 9213934696) is appointed as Local Commissioner, who shall visit the premises of Defendant No. 1 at the following address:-
Patil Rail Infrastructure Pvt. Ltd. The Safe Legend, 3rd & 4th Floor, 6-3-1239/B/111, Renuka Enclave, Raj Bhavan Road, Somajiguda, Hyderabad - 500082.
37. Local Commissioner shall visit the aforesaid premises and search and take into custody any information/data/drawings belonging to the Plaintiffs in the possession of the Defendants, including but not limited to hard copies as well as soft copies of the Impugned Drawings maintained on the computer system, back-up files, duplicate copies etc., including on any computer/laptop/hard disk etc. He shall also take into custody Central Processing Units (CPUs), hard disks, laptops and/or other storage media containing any part of the drawings belonging to the Plaintiffs or a colourable imitation thereof, identified by the technical expert/authorised representative(s) of the Plaintiffs.
38. Local Commissioner, if required may demand all passwords, if any of the electronic devices and do all other things to enable the Commissioner to have access to the contents therein.
Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 11 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:3639. Local Commissioner shall create mirror image of the hard disks of all the Computer/Servers present at the aforesaid premises and for cloud storage and/or any device on which data with regard to the Defendants is stored including their emails etc. as well as photocopies of all physical documents present at the said locations. The Local Commissioner will be empowered to make copies of any material in power and possession of the Defendants and/or employees, representatives, etc. relevant to the present case.
40. Local Commissioner along with the Representative(s) of the Plaintiffs and/or their counsel as well as IT experts, if any, shall be permitted to enter the premises of the Defendants.
41. Local Commissioner shall seize the infringing products and hand over the same to Defendants on superdari, upon Defendants furnishing an undertaking that it shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.
42. Local Commissioner shall be permitted to take photographs/videos of the execution of the Commission. He shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. The SHO of the concerned Police Station is directed to provide necessary assistance to the Local Commissioner, if sought for.
43. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.
44. Plaintiffs shall serve a copy of this order upon the Defendants along with paper book of the suit at the time of execution of the proceedings.
45. Fees of the Local Commissioner is fixed at Rs. 1,50,000/- in addition to travel, boarding and lodging expenses as well as other miscellaneous Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 12 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36 out-of-pocket expenses for the execution of the Commission. Fees of the Local Commissioner shall be paid in advance by the Plaintiffs.
46. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.
47. Plaintiffs shall inform the Registry about the execution of the proceedings by the Local Commissioner and only thereafter, Registry shall issue summons of the suit to the Defendants.
48. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.
49. Application is accordingly disposed of.
50. Copy of this order be given to learned counsel for the Plaintiffs dasti under the signatures of the Court Master.
JYOTI SINGH, J SEPTEMBER 02, 2022/rk/shivam Signature Not Verified Digitally Signed CS(COMM) 602/2022 Page 13 of 13 By:KAMAL KUMAR Signing Date:15.10.2022 12:22:36