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4. Heard learned advocates for the respective parties.

5. It was submitted by learned advocate for the petitioners that application Ex. 6 of the Trademark Suit No. 6 of 2020 ("Local Commissioner Application") inter alia under Order XXVI Rule 9 and Order XXXIX Rule 7 of the Code seeking appointment of Local Commissioner, at the cost and expenses C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 of the petitioners to visit the premises of the respondents to inter alia inspect the machines, computer systems etc, found at the premises of the respondents to ascertain and prove the infringing activities being carried out by the respondents was wrongly ordered by the court below issuing notice to the respondents. It was further submitted that appointment of court commissioner was sought in order to ascertain and prove that respondents are manufacturing, selling, offering for sale and using machines/devices that infringe patent of the petitioner no.1 as those machines/devices incorporate the patented technology of petitioner no.1 in its patent No. IN271425, so as to result in the infringement of the said patent. It was further submitted that arguments were advanced by learned advocate for the petitioners before the trial court though the impugned order was passed in violation of the settled principle of law as laid down by the Hon'ble Supreme Court of India and various High Courts across the country and principle of natural justice. It was further submitted that the appointment of Court Commissioner in intellectual property rights cases ex parte is desirable to ensure that the surprise element remains intact, in absence whereof the Respondents would easily be in a position to remove the infringing products when the Court Commissioner visits the premises of the respondents. That, the trial court failed to exercise the C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 jurisdiction vested upon him in accordance with law especially in failing to pass orders which would preserve and protect, the incriminating evidence. It was further submitted that trial court failed to consider that the service of impugned order or notice in the applications on the Civil Applications on the respondents could result in either the movement of the infringing machines or software to unknown destination leaving no surviving evidence thereby causing grave prejudice to the petitioners, and therefore, impugned order is liable to be quashed. It was further submitted that the trial court did not appreciated the guidelines laid down by the learned Division Bench of Delhi High Court in Case of "Autodesk Inc & Anr. v. A.V.T. Shankardass & Anrs, reported in AIR 2008 Delhi 167, wherein it is held that on the question of appointment of a Local Commissioner in software infringement and piracy matters is not as much to collect evidence but to preserve and protect the infringing evidence. The pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex-parte appointment of a Local Commissioner there is likelihood that such evidence would be lost, removed or destroyed. That, trial court did not consider the same while passing the impugned order, and therefore, also impugned order is unsustainable in law. It was further submitted that during the hearing of C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 application Ex. 6 before the trial court, learned counsel appearing for the plaintiffs-petitioners had relied upon various orders passed by the Hon'ble Delhi High Court in suits wherein infringement of patent is an issue. That, the trial court ought to have taken the same view unless the said orders were not applicable to the facts of the case on hand, for which, trial court ought to have provided reasons for its disagreement to follow the said view. It was further submitted that no reasons were recorded to justify its decision not to exercise its powers under Order XXVI Rule 9 of the Code, despite the petitioners having made out a very good prima facie case in view of the documents produced before the learned trial court. It is further submitted that in cases involving patent and/or copyright infringement, an element of surprise is of critical importance, and in fact necessary to subserve the ends of justice. However, trial court has grossly and manifestly erred in not appreciating that issuance of notice without granting ex-parte ad interim orders, would result in effacement of entire incriminating evidence. Referring the case of "Laxmikant V. Patel v. Chetanbhat Shah & Anr, reported in (2002) 3 SCC 65. it is submitted that in cases where the discretion exercised by the trial court or High Court against the plaintiff is neither reasonable nor judicious, it becomes obligatory on the Appellate court to interfere and grant interlocutory injunction.

"Coming now to the question of guidelines to be set, we C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 have heard both the counsel for the parties. We are conscious of the fact that it is neither feasible nor practical to lay down guidelines, which would cater to numerous and all the situations that may arise. However, some of the following relevant factors and guidelines are being enumerated which the Court may take into consideration on the question of appointment of a Local Commissioner in software infringement and piracy matters:- (i) The object of appointment of a Local Commissioner in software piracy matters is not, as much to collect evidence but to preserve and protect the infringing evidence. The pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed; (ii) Request for ex parte appointment of a Local Commissioner in such matters is usual and in fact is intended to sub serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered; (iii) The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade. (iv) It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendants premises. Any such attempt also inheres in it the possibility of disappearance of the pirated software/incriminating evidence in case the decoy customers is exposed. Accordingly, visit by decoy customer or investigator is not to be insisted upon as pre condition. A report of private Investigator need not be dis-regarded or rejected simply because of his engagement by the plaintiff. The information C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 provided by the private Investigator should receive objective evaluation. (v) In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy."

22. It appears that while passing an order dated C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 29.01.2020 by this Court, the judgment of the Hon'ble High Court of Delhi reported in 2008(105) DRJ 188(DB) in case of "Autodesk Inc & Anr. v. A.V.T. Shankardas & Anrs," was considered by this Court. In this judgment, certain guideline were issued by Hon'ble High Court of Delhi in a matter of software infringement and piracy and appointment of local commissioner observing that it would not be a matter to collect evidence but to preserver and protect the infringing evidence. It was further observed while issuing the guidelines that the pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex-parte appointment of a Local Commissioner there is likelihood that such evidence would be lost, removed or destroyed. In the instance case, it is the case of the petitioners before the trial court that patent report is infringed by the respondents herein. If we consider the guidelines issued by Hon'ble Delhi High Court and the facts of the present case, patent would not be physically installed machines/product, which could easily be removed or hidden as is sought to be portrayed by the petitioners. Further, it appears from the judgment replied upon by the petitioners that specific guidelines and manner in which, the court commission was to be carried out so that it would result in undue loss of proprietary material and trade secrets of the C/SCA/2588/2020 CAV JUDGMENT DATED: 29/04/2022 defendants. There cannot be a straitjacket formula where same guidelines are to be followed in case of patent infringement or software piracy as the criteria would be substantially different.