$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on : 18.4.2017
Judgment delivered on : 26.4.2017
+ CS(COMM) 83/2017
HOLLAND L.P. & ANR ...... Plaintiffs
Through Mr. J. Sai Deepak, Mr. Mohit Goel,
Mr. Shidhant Goel, Mr. Ashutosh
Nagar and Mr. Abhishek Kotnala,
Advs.
versus
A.D. ELECTRO STELL CO. PVT. LTD. ..... Defendants
Through Mr. Rajesh Mahendru, Adv for D-1.
Mr. Ashwani Bhardwaj, Adv for D-2
to D-4.
Mr. G. S. Chaturvedi and Mr. R.
Madhav Bera, Advs for D-3.
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR
INDERMEET KAUR, J.
I.A. No.4740/2014 (under Order XXXIX Rules 1 & 2 CPC) 1 Present suit is a suit for permanent injunction restraining infringement of copyright, rendition of accounts and damages. The plaintiff is a company CS(COMM) No.83/2017 Page 1 of 26 incorporated under the law of United States of America having its registered office at Illinois, USA.
2 Plaintiff No. 2 is a partnership firm registered under the laws of India having its registered office at Greater Kailash Enclave-I, New Delhi. Mr. Naveen Sangri, the constituted attorney of plaintiff No.1 is also the managing partner of plaintiff No. 2. The plaint has been signed and verified through him.
3 Plaintiff No. 1 is stated to have pioneered the delivery of comprehensive and progressive transportation solutions and especially 580 in the field of railway transport. It has an experience of more than 80 years in the said industry and boasts of a global presence in more than 40 countries. Amongst several auto rack components, cable and chain securement systems are a container securement locks developed by plaintiff No.1, i.e. the automatic twist locks (ATLs). The plaintiffs‟ ATLs are used to secure containers to railcars and to fit all ISO corner castings. The novel constructional features of the plaintiffs‟ ATLs is a result of years of research and development which has involved investment of tremendous amounts of skill, labour of the engineers and experts of plaintiff No.1. The intellectual rights in these ATLs including his drawings vests solely with plaintiff No.1. CS(COMM) No.83/2017 Page 2 of 26 He is entitled to enjoy all such exclusive rights under Section 14 of the Copyright Act, 1957 (hereinafter referred to as the „Copyright Act‟). 4 The plaintiff No. 1 has been granted a patent for its ATLs in the USA. Plaintiff No. 2 has also applied for a patent for its ATLs in India under Patent Application No.1922/DEL/2007 dated 28.08.2006 which is currently pending.
5 The two fundamental constructional features of the proprietary drawings of ATLs of plaintiff No. 1 comprise of (i) a uniquely configures shaft member for receiving springs of various types/material and (ii) spiral torsional springs that are made of tempered steel. All these features which are illustrated in the drawings of plaintiff No. 1 are proprietary to plaintiff No. 1 who alone is the owner of copyright in such original drawings/artistic work. Plaintiff No. 2 is the exclusive licensee of plaintiff No. 1 for ATLs in the territory of India. Plaintiff No. 2 is authorized to manufacture, reproduce, sell, offer for sale these ATLs based on the proprietary drawings of plaintiff No. 1. The fact that plaintiff No. 2 is the licensee of plaintiff No. 1 has been communicated to the Ministry of Railways, Research Design and Standard Organisation (RSDO) (defendant No.2). In September 1997, the Container Corporation of India (CONCOR) selected the plaintiffs‟ ATLs CS(COMM) No.83/2017 Page 3 of 26 conforming to drawings No.CONTR-9405-S-21 (fitment details of the plaintiffs‟ ATLs) which have been used by the Indian Railways in all its containers. The RITES (defendant No.3) was assigned the task of carrying out „vendor approval‟ for the ATLs of plaintiff No.2 but now the responsibility has been taken over by defendant No.2. Once defendant No.2 took over this responsibility, the approval had been granted by defendant No.2 in accordance with the „Guidelines for Multisourcing of Automatic Twist Lock‟ (hereinafter referred to as the Multisourcing Guidelines) issued by defendant No.2 in the year 2011. The RITES has also carried out trials of ATLs of various other companies who have devised their own proprietary drawings for such ATLs. The ATLs of plaintiff No. 1, licensed to plaintiff No.2, was also tested by RITES. On 18.05.2012, defendant No.2 conveyed its approval to plaintiff No. 2 for supply of plaintiffs‟ ATLs to RITES in accordance with the Multisourcing Guidelines. This has made plaintiff No. 2 an approved vendor for ATLs. The quality assurance plan approved by defendants No. 2 & 3 is also a part of the record. Till the date of filing of the suit (2014), no other supplier except the plaintiff has been approved by defendants No. 2 & 3/Indian Railway for the supply of ATLs. CS(COMM) No.83/2017 Page 4 of 26 6 Defendant No.1 (A.D. Electro Steel Company Pvt. Ltd.) is engaged in the manufacture and supply of container securement locks. Defendant No.1 is not a licensee of the ATLs of the plaintiff or of the spare parts of ATLs of the plaintiff. As per the information of the plaintiff, defendant No.1 till the filing of the suit has not been approved as a vendor by defendant No.2 for supply of securement locks. In the year 2009, defendant No.1 first attempted to infringe upon the copyright of the plaintiff in their ATLs when it sought to supply ATLs conforming to the plaintiffs‟ drawings to the Indian Railways. On 12.08.2009, the Northern Railways had raised an order upon defendant No.1 for supply of ATLs conforming to Holland drawings. Such an order could not have been completed without defendant No.1 infringing upon the original proprietary drawings of the plaintiffs. The plaintiffs raised an objection both before the defendant No.1 and the authorities of the Indian Railways. The General Manager, Northern Railways on 12.10.2009 wrote to defendant No.3 seeking information as to whether defendant No.1 was an approved vendor or not. On 27.10.2009, defendant No.3 wrote back to the General Manager, Northern Railways stating that plaintiff No. 2 is only an approved source for the supply of ATLs; defendant No.1 has so far not been approved for supply of ATLs. Defendant No.1 has deliberately misled the CS(COMM) No.83/2017 Page 5 of 26 Railways that it has been approved by the RITES when it has not been done so. Pursuant to a tender floated by Southern Railways for which defendant No.1 had made a bid, a purchase order dated 10.12.2013 was placed upon defendant No.1 for the supply of the said ATLs. To execute the order of Southern Railways, defendant No.1 would have necessarily supplied the ATLs in conformity with the original proprietary drawings of the plaintiffs‟ ATLs which would have amounted to an infringement of copyright of the plaintiffs. An objection was raised by the plaintiff. It was learnt that defendant No.1 in July has also procured a purchase order from East Coast Railway for supply of these ATLs which were conforming to the original drawings of the plaintiffs. A clarification was thereafter issued by the Southern Railways qua the purchase order of the defendant clarifying and directing the defendant to follow the Multisourcing Guidelines. Defendant No.1 has bid for other tenders of the Railways and to fulfil these tenders, he would necessarily have to infringe upon the original drawings of the plaintiffs. It is reiterated that the plaintiffs‟ original proprietary drawings of ATLs and its spare parts constitute an artistic work under Section 13 read with Section 2 (c) of the Copyright Act. The unauthorized, illegal and CS(COMM) No.83/2017 Page 6 of 26 unlicensed use of such proprietary drawings of the plaintiffs amounts to an infringement of his copyright. Present suit has accordingly been filed. 7 Defendant No.1 alone had been arrayed as a party; thereafter with the intervention of the Court, on 19.03.2014, the RSDO, RITES and the Ministry of Railways were also directed to be made parties. They have been impleaded as defendants No.2, 3 & 4 respectively. Amended memo of parties is on record.
8 Defendant No.1 has denied the averments made in the plaint. His defence is that the plaintiffs have no right of the said drawings as they are in public domain and have been issued by defendant No.2. The plaintiffs in fact never challenged the tenders floated by the Railways for the supply of ATLs conforming to the drawings of the plaintiffs; the plaintiffs cannot claim any monopolstic right on the said drawings. No copyright subsists in any design which is capable of being registered under the provisions of Design Act; the copyright in any design which is capable of being registered ceases as soon as the article to which the design has been applied has been reproduced more than 50 times which is so in the instant case. The design of the plaintiff was capable of being registered under the Design Act; it has not been done so; thus the alleged copyright in the said design has even CS(COMM) No.83/2017 Page 7 of 26 otherwise ceased. Defendant No.1 from time to time has been participating in the tenders floated by the Ministry of Railways for supply of ATLs. His participation in these tenders is since the year 2009. The drawings and guidelines for manufacturer and supply of ATLs are provided by defendant No.2 to defendant No.1 on a request made by defendant No.1 to defendant No.2. This tender inter-alia contains an item description of ATL devices specifying the drawing numbers which are provided by defendant No.2 on the basis of which specifications and final drawings have to be prepared by defendant No.1 and to be submitted to defendant No.2 for its approval. In order to meet the specifications and drawings given by defendant No.2, the drawings prepared by defendant No.1 of the assembled devices are more or less the same and in compliance with the specifications and drawings of defendant No.2. They are in conformity and in compliance with the specifications of the drawings provided by defendant No.2. 9 Defendant No.2 provides the necessary drawings which drawings numbers are mentioned by the Railways in their tenders along with the Guidelines for the supply of ATL devices. These Guidelines in fact specify that in order to maintain the public and pricing policy, at least 80% of the demand should be covered invariably from the registered/approved suppliers, CS(COMM) No.83/2017 Page 8 of 26 the balance quantity upto 20% should be covered from un-registered firms whose capacity could not be tried by an educational order earlier but whose offers are competitive and prima-facie the Railway is satisfied that they are capable of executing the order. The Railways have floated tenders for supply of ATLs keeping in mind the public policy. With this policy in mind, the Railways offered 20% of the demand to various unregistered firms including defendant No.1 from time to time. This discretion of such an offer is wholly upon the Railways and it is on their approval that defendant No.1 has been supplying these ATL devices to the Railways. Defendant No.1 has been participating in these tenders for supply of ATL devices since the year 2009 along with the plaintiffs. The plaintiff was at all material point of time aware of these orders which were being placed upon defendant No.1. The plaintiffs inspite of being aware of the specifications, character and dimensions of the ATL device supplied by defendant No.1 have never raised any objection till the filing of the suit. In 2011, defendant No.1 submitted his drawings for the manufacture of its ATLs to defendant No.2 for approval. He was registered as a registered supplier. These ATLs are since being supplied by defendant No.1 to defendant No.2. Defendant No.2 in 2014 had given a letter to defendant No.1 asking him to supply three wagons of ATL devices for CS(COMM) No.83/2017 Page 9 of 26 experimental running and there is every possibility that a final approval would be granted to defendant No.1. Copy of the letter dated 23.08.2014 exchanged between defendants No. 1 & 2 is also on record. It is denied that the plaintiff has made any novel constructional features of the ATLs including its drawings as has been alleged by him. The claim of plaintiff No.1 is barred under the Design Act and the Patent Act as the said drawings have been provided by defendant No.2 to the Ministry of Railways for public purpose. The drawings prepared by defendant No.1 are from the drawings provided by defendant No.2 and thus cannot be termed as „infringement‟ committed by defendant No.1 of any copyright of the plaintiffs. It is denied that plaintiff No. 1 is the owner of such drawings as has been alleged. The drawings of defendant No.1 have been approved by defendant No.2 for which reason defendant No.2 had in the last letter of 2014 asked defendant No.1 to be tested by defendant No.1 for a period of three months. The defendant has committed no infringement of the drawings of the plaintiff. These drawings are readily available for reference by purchasing a publication for a sum of Rs.2,300/-; such a publication has been done by the Indian Railways to encourage further innovation and competition in the space of ATLs.
CS(COMM) No.83/2017 Page 10 of 26 10 Defendants No. 2 & 4 i.e. RSDO and Ministry of Railways have filed a common written statement. Their submission is that the Railways have no role in the manufacture of this product. It is stated that drawing No. CONTR-9405-S/21 details the interfacing of the plaintiff‟s ATL‟s with the container flat wagons; it does not detail the internal components of plaintiffs‟ product. The quality assurance plan of the plaintiffs was acknowledged and returned with a mark „noted for record only‟. It was not approved by defendant No.2 as has been claimed by the plaintiffs. The plaintiff has been declared as a „developed source‟ of ATL devices on the Indian Railways. Defendant No.2 has been writing to the Zonal Railways to re-direct any source to them so that defendant No.2 can engage with them for their development in accordance with the structural multisourcing regime. A series of correspondence have in fact been addressed by defendant No.2 asking the Zonal Railways to direct other firms for development and multisourcing. The letter dated 27.10.2009 issued by defendant No.3 indicates that defendant No.1 is not an approved source for ATLs. In para 36, it has been stated that efforts for multisourcing have been made by defendant No.2 to develop newer vendors and such informations are given to the Zonal Railways/stake holders. These communications do not stop the CS(COMM) No.83/2017 Page 11 of 26 Zonal Railways from procuring any item from other sources known to them. In fact defendant No.2 also advised the Zonal Railways to direct these sources to defendant No.2 for consideration under the multisourcing guidelines. It is denied that any proprietary drawing of the plaintiffs‟ ATL have been published by defendant No.2. Defendant No.2 has incorporated the interfacing of the plaintiffs‟ product with the container wagons design i.e. owned by defendant No.2 i.e. drawing No. CONTR-9405-S/21. This interfacing does not publish any detail of the plaintiffs‟ internal components. In fact drawing No. SB-71350/S is available on the website of plaintiff No. 2 itself.
11 Defendant No.3 (RITES)‟s defense is that the only role attributed to him was to grant an approval which it did for a period of two years; thereafter, the process of vendor approval was taken over by defendant No.2 i.e. w.e.f August, 2010 who has since then been dealing with all approvals in respect of ATLs. It is not denied that defendant No.3 had written a letter (dated 27.10.2009) to the General Manager, Northern Railways informing them that defendant No.1 was not an approved source for supply of ATLs. 12 Replication has been filed by the plaintiff to the respective written statements. The averments contained in the plaint have been reiterated. It is CS(COMM) No.83/2017 Page 12 of 26 reiterated that the claim made by defendant No.1 that the drawings of the plaintiffs‟ ATLs are in public domain is false. Defendants No. 2 to 4 have specifically stated that drawing No. CONTR-9405-S/21 details only the interfacing of the plaintiffs‟ ATLs with the Indian Railways; the drawing does not detail the internal components of the plaintiffs‟ ATLs. 13 In the course of these proceedings, defendant No.1 had filed an additional affidavit dated 06.03.2017 wherein it is stated that drawing No. CONTR-9405-S/21 of the ATLs was provided by the Railway Authorities in the year 2007-2008; based on these details and specifications, defendant No.1 had designed the ATLs.
14 On behalf of the plaintiffs, arguments have been addressed by Mr. Jai Sai Deepak, Advocate. Contention is that the plaintiff is the owner of the copyright in the drawings of the ATLs‟; it is an artistic work within the meaning of Section 2 (c) read with Section 13 of the Copyright Act with the plaintiffs‟ right to convert a two dimensional artistic work into a three dimensional constructions. Plaintiff No. 1 is the exclusive owner of this copyright and plaintiff No. 2 is his exclusive licensee. Defendant No. 1 in para 9 (v) of the written statement has in fact admitted that he is copying the drawings of the plaintiff; his justification is that this copyright in the CS(COMM) No.83/2017 Page 13 of 26 drawings has ceased in view of the provisions of Section 15 (2) of the Copyright Act; submission being that it is only an aesthetic feature which can be registered under Section 2 (d) of the Design Act; the functional features are not capable of a registration under the Design Act. To support this proposition, reliance has been placed upon 2013 (55) PTC 61 Mohan Lal Vs. Sona Paint and Hardwares as also another judgment of a Bench of this Court reported as 1999 PTC 36 (DEL) Escorts Construction Equipment Vs. Action Construction Equiptment,. Further submission being that the fact that plaintiff No. 1 has been granted a patent by USA for these ATLs prima-facie demonstrates that the same have functional features; the exclusive right to reproduce these drawings into a 3-D object vests with the plaintiffs. The drawings of the plaintiffs are not in public domain as defendant No.2 has admitted that no drawings have been given by defendant No.2 to defendant No.1. Moreover, drawing No. CONTR-9405-S/21 details only the interfacing of the plaintiffs‟ ATL and does not detail the internal components. The Multisourcing Guidelines which regulate the grant of approval deals with the physical characteristics of the ATLs; the Multisourcing Guidelines do not permit defendant No.1 to infringe upon the drawings of the plaintiffs; merely because the plaintiffs‟ drawings are used CS(COMM) No.83/2017 Page 14 of 26 as reference point or quoted in the tender so prescribed by defendant No.2 does not take away the copyright of the plaintiff; they do not come into public domain.
15 Arguments have been refuted. The contesting defendant is in fact defendant No.1. His submission is that drawing No. CONTR-9405-S/21 has in fact been uploaded by defendant No.2 and given to defendant No.1 who has conformity features of the said drawings; it does not amount to an infringement as these drawings are now in public domain. It is further pointed out that shape, configuration and pattern detailed in the drawings fall within the meaning „design‟ under Section 2 (d) of the Design Act and necessarily have to be registered. Under Section 15 (2) of the Copyright Act, a copyright in any design which is capable of being registered under the Design Act but it has not been registered will cease where the article has been reproduced 50 times. The allegation of the plaintiff that these drawings are the original artistic work of the plaintiff is wrong. The plaint is also lacking in material particulars. The allegations in the plaint are vague with no details, numbers and no marks of identification are disclosed as to what drawings, information, know-how or secrets belonged to plaintiff No. 2 and which have allegedly been infringed by defendant No.1; the so called alleged CS(COMM) No.83/2017 Page 15 of 26 intellectual properties are not identifiable. It is further pointed out that defendant No.1 cannot be restrained from carrying on a lawful trade; the plaintiff was well aware of the fact that defendant No.1 has entered into this business since the year 2009; he has chosen to file a suit only in 2015 i.e. after almost six years. He has acquiesced the approval to defendant No.1 by defendant No.2. Defendant No.1 has been making supplies of ATLs to the Indian Railways and to various Zonal Railways and the last letter dated 28.03.2014 issued by the Ministry of Railways in favour of defendant No.1 clearly shows that he has been directed to supply three wagons set of ATLs to CONCOR for a study; the various other orders which have been placed upon him also support his submission that in fact defendant No.1 has almost reached the stage of having become an approved vendor. The Multisourcing Guidelines also encourage other vendors to participate in this venture; it cannot be the monopoly of plaintiff No. 2 alone; it is pointed out that ATLs which were original priced at Rs.12,000/- has now been reduced to a figure of Rs.4,900/- and this is all because of the competition in the market where defendant No.1 is only a small fish. This is a healthy competition which should be encouraged and this is clear from the Multisourcing Guidelines which envisage such a situation. Learned counsel for defendant No.1 in CS(COMM) No.83/2017 Page 16 of 26 support of his submission has placed reliance upon a judgment of a Bench of this Court reported as 2002 (25) PTC 327 (Del) Polymer Papers Ltd. Vs. Gurmit Singh & Others as also another judgment of the Division Bench of this Court reported as 2009 (40) PTC 519 (Del) Microfibres Inc. Vs. Girdhar & Co. & Anr. Submission is that the plaintiffs have failed to make out any prima-facie case in their favour. The application is liable to be dismissed.
16 Arguments have been heard. Record has been perused. 17 Plaintiff no.1 on 03.02.2009 was granted a patent qua his container
securement device i.e. the automatic twisted lock (ATL). This is evident from the patent application of plaintiff No.1 which has been placed on record. On 11.7.2006 plaintiff nos.1 and 2 had entered into an agreement by virtue of which plaintiff no.2 became the exclusive licensee of plaintiff no.1 in the territory of India. The patent application filed by plaintiff no.2 seeking a grant of patent in his favour is pending before the Competent Authority since 28.8.2006; he has not yet been granted a patent. Drawing No.CONTR- 9405-S-21 is a copy of the drawing of plaintiff no.1‟s ATL. This drawing has been filed at serial no.4 in the list of documents of the plaintiff. The fact that this drawing number has been uploaded by defendant no.2 and in fact CS(COMM) No.83/2017 Page 17 of 26 had been passed on to defendant no.1 on the basis of which defendant no.1 had prepared his drawing and the ATL which he was manufacturing for the Railway is not in dispute. The supplementary affidavit of defendant no.1 dated 06.3.2007 specially so states. This affidavit of defendant no.1 states that drawing No.CONTR- 9405-S-21 of the ATL has been provided to him by the Railway Authorities in the year 2007-08 and based on the details and specification contained in the said drawing defendant no.1 designed his ATL with all its specifications. The fact that this drawing had been given to defendant no.1 as way back as in the year 2007-08 by defendant no.2 is not disputed. There is no opposition to this affidavit dated 21.01.2017 which has been taken on record and which was in compliance of the directions contained in the order dated 21.3.2017. In fact this has always been the stand of defendant no.1 who has stated that it was on the basis of this drawing which has been given to him by defendant no.2 that defendant no.1 had made his own drawing and manufactured his ATLs which were then being supplied to the Railway since the year 2009. The fact that ATLs had been manufactured and were supplied by defendant no.1 to various departments of the Indian Railways including the Zonal Railways since the year 2009 is evident from the documents of the defendant. Various purchase CS(COMM) No.83/2017 Page 18 of 26 orders have been placed on record. The purchase order dated 26.9.2011 of the East Cost Railway shows that ALTs had been supplied by defendant no.1 to the East Cost Railway. Purchase order dated 06.6.2013 issued by the Indian Railways, purchase order dated 19.7.2013 issued by the South Western Railway all evidence this same position that orders for manufacture and supply of ATLs were placed by the Railways upon defendant no.1 pursuant to which ATLs were manufactured and supplied. These purchase orders were followed by subsequent orders dated 23.9.2013 issued by the Southern Railways in favour of the defendant followed by another purchase order of the Southern Railway dated 10.12.2013. Letter dated 28.3.2014 issued by the Ministry of Railway in favour of defendant no.1 had advised him to supply three wagons supply of ATLs to CONCOR for purposes of a case study. On 10.02.2014, defendant no.2 (RSDO), who was the certified body to grant approval to a party for the quality of his product had granted a certificate of approval to defendant no.1 which was for a period of three years i.e. up to 10.02.2017. The issuance of this communication by defendant no.1 details the approval granted by defendant no.2 in favour of defendant no.1 subject to terms and conditions annexed along with this document. These various purchase orders ranging from the year 2011 all CS(COMM) No.83/2017 Page 19 of 26 show that the Indian Railways under the Ministry of Railway as also the East Coast Railways, South Western Railways and Southern Railways had placed several orders on defendant no.1 for supply of ATLs which purchase orders had been completed meaning thereby it was to the satisfaction of the Railways that these ATLs which had been manufactured by defendant no.1 had been accepted by the Railways. The letter dated 20.01.2014 sent by the Ministry of Railway to defendant no.1 also reflects the intent of the Government to accord to defendant no.1 the status of a regular supplier of his ATL‟s.
18 The fact that the drawing of the plaintiff No.CONTR- 9405-S-21 has been handed over by defendant no.2 to defendant no.1 is also not in dispute. This document is thus in public domain. Pictorial representation of the drawing of both plaintiff and the defendant has also been perused. To the naked eye, the drawings appear to be almost similar and this is also the stand adopted by defendant no.1 who has stated that it was on the basis of these drawings which had been given to him by defendant no.2 that defendant no.1 had prepared his specifications and drawings and assembled his device which was in compliance of the specifications of the drawings approved by defendant no.2.
CS(COMM) No.83/2017 Page 20 of 26 19 The fact that these supplies had been made by defendant no.1 to various branches of the Railways since 2009 which has been specifically stated in the written statement of defendant no.1 to which there is no denial. This suit has been filed in March, 2014. There appears to be no explanation as to why the plaintiff did not take any action prior in time if he was really aggrieved by the fact that his own drawings upon which he had a proprietary right has been infringed upon by defendant no.1; why no action has been taken for such a long period has not been answered.
20 Section 2(d) of the Design Act reads as follows:
2(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14of 1957).
CS(COMM) No.83/2017 Page 21 of 26 21 The shape, configuration, pattern and composition of the lines mentioned in the pictorial drawing of the plaintiff prima facie fall within the definition of "design" as contained in Section 2(d) of the Designs Act. This drawing (CONTR-9405-S-21) cannot simpliciter be termed as a mechanical device to get the benefit of being excluded from Section 2(d) of the said Act. The plaintiff has admittedly not made any effort to get his design registered.
22 Section 15(2) of the Copyright Act reads as under:
15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 2000 (16 of 2000)- (1) ........
(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person.
23 Since the design in the instant case which was capable of being registered under the Designs Act and which has not been registered, it would lose its copyright, if any, since admittedly this article has been reproduced more than 15 times by an industrial process. Reliance upon Section 15(2) of the said Act by defendant no.1 appears prima facie to be in his favour. CS(COMM) No.83/2017 Page 22 of 26 24 The Multi Sourcing Guidelines of defendant no.2 are also on record. This is an admitted document. Along with this Guidelines annexure II/4-21 which is a copy of the letter dated 27.01.1979 is also on record. This document is admitted. This document is a communication inter se the various departments of the Railway Board and the Indian Railways wherein instructions are given that even unregistered firms should furnish their quotations in order that supply can be placed upon them for the supply of railway equipments; their capacity can be verified by deputing representatives of the Department for the said purpose. This circular in fact states that 80% of the demand should be covered invariably by a registered/approved supplier but the balance quantity of 20% should be covered from unregistered firms whose capacity could not be tried by an educational order earlier but whose offers are competitive and prima facie the Railway is satisfied that they are capable of executing the order. This is also the stand adopted by defendant no.1. In his written statement this circular has been relied upon to substantiate this defence that this circular is in fact an instruction to control healthy pricing and to remove the monopoly of bother big giants like the plaintiff. The fact that after participation of defendant no.1 in the fray the original price of an ALT which was priced at CS(COMM) No.83/2017 Page 23 of 26 Rs.12,000/- per lock has been reduced to Rs.4900/-. This is not in dispute. This reduction is primarily because of the healthy competition which has been created by defendant no.1. The last order placed upon defendant no.1 by defendant no.2 through its communication dated 28.3.2014 substantiates the submission of defendant no.1 that a trial testing is going on his product; the fact that earlier orders had been placed upon him and they had been satisfactorily implemented qua various Zonal Departments of the Railways also not being in dispute, the submission of defendant no.1 that he is at the stage of getting a status of an "approved vendor" cannot be discounted. The fact that he had been granted a certificate of approval by defendant no.2 on 10.02.2014 is also not in dispute. This document is on record. He is a registered supplier. Defendant no.1 who is carrying out his trade lawfully cannot be restrained from doing so. Merely because he is in competition with the plaintiff does not make out a case to return a finding that the petitioner having a patent under the US law is automatically entitled to the benefit of the same for which an application is admittedly pending since the year 2006.
25 The plaintiffs have failed to show that they are the exclusive owners of this drawing CONTR- 9405-S-21 which they are using for the purpose of CS(COMM) No.83/2017 Page 24 of 26 manufacturing their ATLs. There claim to be the originators of the said ATLs is destroyed by the fact that it is this drawing which has been used by defendant no.2 as a benchmark to allow other competitors to come into the market and to make ATLs which would be in the conformity and as per the specifications laid down in this drawing. This drawing has entered the public domain; it cannot be the proprietary right of the plaintiffs. Heavy reliance placed by the plaintiff upon the stand of defendant nos.2 to 4 that the drawing along has been uploaded and not its internal component is neither here and nor there. This statement of the plaintiff is vague; what are those internal components, know-how; secrets which have been obtained by defendant no.1 unauthorizedly has not been detailed. The drawing No.CONTR- 9405-S-21 admittedly having been supplied by defendant no.2 to all persons, who wish to apply to bid for supply of ATLs to the Railways, have to follow the design and pattern laid down in the said drawing. Such a drawing would fall prima facie within the definition of Section 2(d) of the Designs Act and was required to be registered. Admittedly the plaintiff has not applied for registration under the Designs Act. Section 15(2) of the Copyright Act, at the cost of repetition, comes to the aid of the defendant. CS(COMM) No.83/2017 Page 25 of 26 26 The Multi Sourcing Guidelines as discussed supra also permit unregistered owners to participate in tenders floated by the Department and in fact defendant nos.2 to 4 in their written statement have been crying hoarse hoping that the Zonal Railways would redirect other suppliers to them in order that orders could be placed upon on such like suppliers even if they are unregistered. Thus in terms of the Multi Sourcing Guidelines, 20% of such orders have to be placed upon such unregistered firms; this is to promote a healthy competition and which exactly the Government has been following; as a result the price index of the ATLs has been reduced considerably.
27 The plaintiffs have failed to make out a prima facie case in their favour; balance of convenience is also not in their favour; irreparable loss and injury will be suffered by the defendants in case defendant no.1 is restrained from carrying on his trade.
28 Application is dismissed.
INDERMEET KAUR, J
APRIL26, 2017
A/ndn
CS(COMM) No.83/2017 Page 26 of 26