MANU/WB/0374/2004

Equivalent Citation: 2005(1)C HN106, 2005(30)PTC 279(C al)

IN THE HIGH COURT OF CALCUTTA

F.M.A.T. No. 3098 of 2004
Decided On: 14.10.2004
Appellants: Bucyrus Europe Limited and Anr.
Vs.
Respondent: Vulcan Industries Engineering Company Private Limited
Hon'ble Judges/Coram:
A.K. Ganguly and T.K. Dutt, JJ.
Counsels:
For Appellant/Petitioner/Plaintiff: Pratap Chatterjee, S. Mukherjee and Ranjan
Bachawat, Advs.
For Respondents/Defendant: Sudipto Sarkar, R.K. Khanna and Rita Khanna, Advs.
Case Note:
Intellectual Property Rights - ad interim Order - Section 15 (2) of Copyright
Act, 1957 - ex parte ad interim Order obtained by suppressing material
facts - lack of bona fide and good faith in facts mentioned in application for
getting ex parte ad interim Order - utmost good faith is condition precedent
for getting such Order - Section 15 (2) provides that copyright in any design
capable of being registered incase not been so registered shall cease as
soon as any article to which design applied reproduced for more than fifty
times by owner of copyright or with its licence by any other person - in
impugned application it has been stated that one appellant carries on
business of marketing of equipments produced by other appellant for last
ten years - since ex parte ad interim Order obtained by suppression and
misleading of facts therefore appellants did not displayed good faith which
is required of them.
JUDGMENT
A.K. Ganguly, J.
1. With the consent of the parties we treat this appeal and the application as on day's
list and dispose of both of them by the following judgment and order.
2. The appeal has been filed by Bucyrus Europe Limited, a company having its office
at Becor House, Green Lane, Lincoln LN-6 7DL, United Kingdom and Bucyrus India
Pvt. Ltd. (hereinafter referred to as the appellant) purportedly against order Nos. 1, 2
& 3 dated 11th August, 2004 of the learned Trial Judge. It is common ground that so
far as order No. 1 is concerned there has been some misconception on the part of the
learned Trial Judge. The appeal has substantially been filed against order No. 2 of the
same date by which the learned Judge refused to grant any ex parte ad interim order
of injunction and was pleased to direct notice to be issued on the defendant namely,
Vulcan Industries Engineering Pvt. Ltd. having its office at the district of Anand in the

18 (Page 1 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 State of Gujarat (hereinafter called the defendant). The learned Judge also refused to
pass any order for appointment of receiver and also in connection with the said
prayer also directed notice to be issued on the defendant.
3. Along with the appeal, a petition for injunction was filed for granting an ex parte
ad interim order of injunction.
4. The High Court on being so moved, on 17th September, 2004 issued an ex parte
ad interim order of injunction restraining the defendant from manufacturing, selling,
stocking for sale, offering for sale, marketing, advertising and distributing in any
other manner or dealing with the impugned product of the defendant having been
produced from any of the drawings being Annexure 'A' or any design substantially
similar thereto by using the engineering, design, shape and configuration and get-up
of the product of the appellant. The Court also passed an ad interim order of the
injunction appointing a Special Officer authorising him to enter the premises of the
defendant as mentioned in the cause title and any other premises within the power
and control of the defendant and to inspect the same and seize all goods, papers,
documents, challans and invoices showing placement orders of the products
including the design relating to marketing and selling of the same. The aforesaid ex
parte order of injunction was given for a limited period of 14 days and this Court
appointed a learned Counsel as Special Officer. The Court, however, directed the
appellant to serve the defendant by courier service and also under registered post.
The matter was made returnable on 24th September, 2004.
5. Thereafter the matter was again mentioned ex parte by the learned Counsel for the
appellants and as the Special Officer was unwell another Special Officer was
appointed directing him to carry out the said order and the returnable date was
extended to 6th October, 2004 and it was directed that the interim order should
continue in the meantime and the copy of the said order was directed to be served on
the defendant by the Special Officer who will go to spot to carry out the order dated
17th September, 2004. Thereafter on 6th October the Special Officer filed his report
and a full contested hearing took place both on 6th October and 8th October, 2004
on the question of grant and continuance of ad interim order.
6. The learned Counsel appearing in support of the defendant seriously opposed the
continuation of the ad interim order on various grounds. First of all, the learned
Counsel submitted that in the injunction petition which was filed in the Court below,
the appellant has clearly admitted that they are engaged in the manufacturing and
marketing of various equipments like W2000(24/96) draglines and the appellant No.
2 have been carrying on the business of marketing the said equipments in India for
the last 10 years. In paragraph 5, it has been admitted that the appellant No. 1 some
time in January, 1997 made technical and engineering drawings relating to its
products and licence was granted to the appellant No. 2 to use the said drawing and
modification thereto exclusively in India. It was also stated that on 4th March, 1997,
the appellant No. 1 applied for and obtained the registration of the design under
Designs Act, 1911. It was also stated that the equipments of the appellants were
launched in or about May, 1997.
7. The learned Counsel has drawn the specific attention of this Court to the following
averments in paragraph 20 of the injunction petition filed by the appellant in the
Court below. Those averments are set out below :
"The respondent after getting the said notices dated 28th February, 2004 and

18 (Page 2 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 19"' May, 2004 has now sought to file a cancellation application dated 1st
June, 2004 before the learned Controller of designs challenging the
registered designs of the petitioner apprehending that legal proceedings shall
be initiated by the petitioner for their such act of infringement of copyright of
the engineering drawings of the petitioner".
8 . The learned Counsel submitted that the aforesaid averments which have been
made in the ex parte application for interim order, do not disclose the state of affairs
fully. On the other hand those averments amount to suppression of a very relevant
and vital part of the case from this Court.
9 . The defendant submits that it has filed three applications for cancellation of the
registration of designs of the appellant in design Nos. 173283, 173284 and 173285 in
the month of June, 2004. On such application being filed before the Assistant
Controller of Patent and Design, the appellants prayed for time to file its counter-
statement. Three counter-statements all dated 27th July were filed by the appellant
before the Controller of Patent and Design, Calcutta by their attorney Mr. Chandra
Kanta M. Joshi. But these facts have been totally suppressed in the application for ex
parte order of injunction filed by the appellant before the Court below. The learned
Counsel submitted that in the statement of case the defendant used certain
documents. Those documents have been used by the appellants in the injunction
petition which they filed in the Trial Court. Referring to such documents, the learned
Counsel submits that this is a case of deliberate suppression inasmuch as the
documents used in a proceeding is disclosed by the appellants without fully stating
that cancellation proceedings were filed before the appropriate statutory authority
and that the appellant is contesting such proceeding by filing its counter-statement
and also by taking time to produce evidence.
1 0 . The learned Counsel also submitted that suppression of the cancellation
proceeding amounts to suppression of highly relevant facts in view of the provisions
of the Designs Act, 2000 (hereinafter referred to as DA). Section 19 of DA provides
for filing of application for cancellation of registered design and also indicates the
grounds on which such cancellation can be sought, Section 22 of DA provides for
legal proceeding in case of piracy of registered design and Section 22(3) of DA
makes it clear that in any suit or in any other proceeding for relief under sub-section
(2) the ground on which the registration of a design may be cancelled under Section
19 shall be available as a ground of defence.
1 1 . The learned Counsel submitted that in an ex parte application for ad interim
order of injunction, filed by the appellants, as in this case, they must disclose the
grounds on which the defendants are seeking cancellation of registration inasmuch as
under Section 22, sub-section (3), of DA, the defendant is entitled to raise those
grounds as its defence. Therefore, the Court must consider the appellants' case for ad
interim injunction along with the defendant's grounds for cancellation of registration.
The learned Counsel submitted that in the Court below the only averments which
were made about the cancellation proceeding are in paragraph 20 which have been
quoted above and so far as the High Court is concerned, there is no whisper of those
cancellation proceeding in the stay petition filed before this Court.
1 2 . The learned Counsel for the appellant while answering the aforesaid
submissions, tried to defend the ex parte ad interim order by saying that there has
been no suppression in the instant case. The learned Counsel submitted that in the
injunction petition filed in the Court below, the cancellation proceeding has been

18 (Page 3 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 referred to. According to the learned Counsel, further reference was not necessary.
The learned Counsel also submitted that it may be a case of lack of forensic
expression but there is no suppression of any material fact. The learned Counsel also
submitted that designs of walking draglines which are used in mines are made by the
appellants out of 60 drawings. Only 3 out of those 60 drawings have been registered.
In respect of 57 other drawings the appellants have a copyright and a copyright is
not required to be registered. The defendants, utilising those drawings, are
fabricating parts of machines and spare parts and thus causing an infringement of the
appellant's copyright. So this proceeding has been initiated by the appellants praying
for protection against such infringement of the copyright. So, looking at the matter
from that point of view, cancellation proceeding of registered designs is not a
relevant fact which is required to be stated in full details.
13. The learned Counsel referred to the provisions of Section 2(d) of DA to point out
that design as defined therein does not include any artistic work as understood in
clause (c) of Section 2 of the Copyright Act, 1957 (hereinafter referred to as CA).
Learned Counsel also referred to Section 14C of CA and urged that under Section 14C
of the CA the appellants have an exclusive right to use the drawings in connection
with its design and this is their property and nobody has any right to infringe this
property right but the same has been done in this case. In order to prevent such
infringement, a prayer has been made for injunction and in such a case the Court
must immediately grant an interim order to protect the right. In support of this
contention the learned Counsel relied on a Supreme Court judgment in the case of
Laxmi Kant V, Patel v. Chetanbhat Shah and Anr., reported in 20.02(24) PTC. 1. The
learned Counsel also relied on a decision in the case of John Richard Brady and Ors.
v. Chemical Process Equipments P. Ltd., reported in MANU/DE/0586/1987 :
AIR1987Delhi372 in order to contend that copyright also exists in respect of
engineering drawings.
14. Learned Counsel also submitted that from the report of the Special Officer, which
has been submitted and circulated, it is clear that the defendants neither co-operated
with the Special Officer nor had disclosed all facts and materials to the Special
Officer. It has also been stated that the Special Officer has not been allowed to take
inspection of all the materials. Therefore, the ex parte ad interim order passed by this
Court on the lines of Anton Piller order has not been carried out.
15. In support of this contention the learned Counsel relied on two decisions. One
was a judgment rendered in the case of British North Rop Ltd. and Ors. v. Blackburn
Ltd. and Anr., reported in 1974 RPC 57. The other decision was rendered in the case
of Anton Piller K. G. v. Manufacturing Process Ltd. and Ors., reported in 1976 RPC
719.
16. Reliance was placed on pages 725-726 of the report in Anton Piller KG, wherein
the learned Judges were explaining the requirement of passing an Anton Piller order
enabling an inspection of the offending materials by an officer appointed by the Court
and the learned Judges made it clear that such an order can only be passed in order
to see that justice is done between the parties so that vital evidence is not destroyed.
At page 726 of the report, the learned Judges explained that the form of the order
should make it clear that the Court was not granting anything which might be
equivalent to a search warrant, but it was an order on the defendant, permitting
inspection. The Court made clear that it is open to the defendant to refuse to comply,
but this he can do at his peril of further proceeding for contempt. At the same time,
the Court made it clear that great responsibility rests on the solicitor of the applicant

18 (Page 4 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 to ensure that the carrying out of such an order is meticulously done with full
responsibility for the defendant's right.
17. However, this Court finds that in the instant case from the report of the Special
Officer it is clear that the defendant after taking legal advice allowed inspection to
some extent and the Special Officer has not complained of any non-co-operation on
the part of the defendant. On the other hand, the Special Officer said that the parties
co-operated with him.
18. On a proper appreciation of the ratio in Anton Filler, this Court finds that such an
order can be passed in the following situations :
(i) where the plaintiff has an extremely strong prima facie case,
(ii) where the actual or potential damage to the plaintiff is very serious, and
(iii) where it was clear that the defendant possessed vital evidence,
(iv) there was a real possibility that the defendant might destroy or dispose
of such material so as to defeat the ends of justice,
(v) the purpose of Anton Filler order is the preservation of evidence.
19. Before passing an Anton Filler order, some safeguards are also to be observed
like asking the plaintiff to give an undertaking in damages in case the plaintiff is
wrong and the defendant suffers damages as a result of the execution of the order.
However, before the Court will grant an Anton Filler order, the plaintiff must be able
to convince the Court that he has a strong case and that the order is indeed essential
to the ends of justice.
20. In a later decision, in Systematica Ltd. v. London Computer Centre Ltd., and
IDNANI, reported in 1983 Fleet Street Reports 313, Justice Whitford warned against
"rather too free a use" of being made of Anton Piller orders by the plaintiff.
21. So far as the other decision in North Rop is concerned, reliance was placed on
page 71 of the report in which the learned Judge dealt with the question of copyright
in the drawings. It cannot be disputed that under Indian Law there can be a copyright
in the drawings but if those drawings are used as designs then the position is slightly
different.
22. Judging the rival contentions, this Court is of the opinion that in the facts of this
case there has been a clear suppression of a very material fact by the appellants
while obtaining an ex parts ad interim injunction on the lines of Anton Piller order.
Attempt has been made by the learned Counsel for the appellants to bifurcate the
case of infringement of design from the infringement of copyright before this Court
but from the case which is made out in its petition in the Court below and also in the
petition before this Court, it is clear that they were running a combined case of
infringement of both. In paragraph 14 of the injunction petition filed before the Court
below it has made detailed reference to its registration and designs under Designs
Act, 1911 and it has been stated that the appellants have copyright in the aforesaid
designs and which is valid up to 4th March, 2012 and in paragraph 21 of the petition
it has also been clearly stated that the defendant has infringed and continues to
infringe the registered designs of the appellants. Therefore, it cannot be contended
that by filing the instant proceeding, the appellants were only socking to protect its

18 (Page 5 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 copyright. From the prayers which were made before the Trial Court and before this
Court, it is clear that the appellants were seeking protection also in respect of their
registered designs. Therefore now, the appellants cannot jettison its case on
registered designs and urge that it is only for protection of its copyright for which
they have come to this Court.
2 3 . Apart from the fact that the cancellation proceedings have been perfunctorily
pleaded in the injunction petition in the Court below and totally suppressed before
this Court, in the petition, filed before this Court, there is a misleading statement in
paragraph 10. The said paragraph is set out below :
"The learned Trial Judge also erred in law and in fact by not taking into
consideration the judgment passed by this Hon'ble Court on March 5, 2003
wherein on the self-same cause of action an ex parte, order of injunction was
granted against the respondents and also a Special Officer was appointed to
inspect all the documents and the engineering drawings of the respondents
and thereby acted beyond his jurisdiction as the said judgment of 5th March,
2003 was binding upon the learned Trial Judge".
2 4 . It was pointed out to us by the learned Counsel for the defendants that no
injunction order was ever granted by this Hon'ble Court on 5th March, 2003 against
them and no Special Officer was appointed. When this was pointed out to the learned
Counselor the appellants, the learned Counsel admitted that this was a mistake in the
drafting of the pleadings before this Court. It may be pointed out that in the memo of
appeal also a similar ground was taken (Ground VIII). So the mistake, apparently, is,
very widespread.
25. Therefore the pleading before this Court, when this injunction petition was filed
ex parte and on the basis of which the Court granted injunction, suffers not only from
suppression of material facts but also suffers on the ground that it contains
misleading averments.
26. Therefore, any ex parte interim order which was obtained from this Court ought
to be dissolved on this ground alone. Reference in this connection be made to a
judgment of the Division Bench of this Court to which one of us was party in the of
Bengal Club Limited v. Susanta Kumar Chowdhury, reported in 2002(3) CHN 322. At
paragraph 38 of the judgment, the following observations have been made by this
Court:
"The question of pleading is of great importance in the context of an ex parte
application for injunction. At that stage proceedings before the Court rest on
the basis of total good faith on the pleadings. At that stage there is no
contested hearing, therefore, the party making the prayer for ex parte ad
interim order of injunction must plead the entire facts of the case. Such
pleading must be clear, complete and candid".
27. Going by the aforesaid well-settled principles this Court holds that there was lack
of bona fide and good faith in the pleadings on the basis of which an ex parte order
of injunction on the line of Anton Piller was obtained from this Court. From the
discussion made in the earlier part of this judgment it is clear that utmost good faith
of the plaintiff is the condition precedent for granting an injunction on the lines of
Anton Piller . Admittedly good faith on the part of the plaintiff is lacking. The Court at
an ex parte stage accepted the pleading to be true and correct and passed the order.
But if there had been a full disclosure of facts, the Court might not have passed the

18 (Page 6 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 order. That the pendency of cancellation is a relevant fact and cannot possibly be
disputed.
28. Reference in this connection be made in the Full Bench judgment of the Delhi
High Court in the case of Metro Plastic Industries (Regd.) v. Glaxy Footwear, New
Delhi, reported in 2000 PTC 1 (see para 34).
29. In so far as the infringement of copyright by the appellants is concerned, this
Court can not overlook the provisions of Section 15 of the Copyright Act. The said
section is set out below :
"15. Special provision regarding copyright in designs registered or capable of
being registered under the Designs Act, 1911.-(1) Copyright shall not subsist
under this Act in any design which is registered under the Designs Act, 1.911
(2 of 1911).
(2) Copyright in any design, which is capable of being registered under the
Designs Act, 1911 (2 of 1911), but which had 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".
30. Under Section 15(2) it is made very clear that copyright in any design, which is
capable of being registered under the Designs Act, but had not been so registered ,
shall cease as soon as any article to which the designs have been applied have been
reproduced more than 50 times by an industrial process by the owner of the
copyright or with its licence by any other person.
31. From its own pleading in the injunction application it has been stated that the
appellant No. 2 carries on the business of marketing of the equipment produced by
the appellant No. 1 for the last 10 years in India, (para 3)
32. Therefore, in the context of this clear admission by the appellant it becomes a
disputed question of fact whether its copyright in designs has ceased as a result of its
reproduction for more than 50 times by an industrial process by the owner of the
copyright or with its licence by any other person. This is such a disputed question of
fact that on this an ex parte ad interim order of injunction can not be granted without
giving the defendants any chance to refute the plaintiffs claim. In fact no such claim,
prima facie, appears to have been made.
33. Therefore, judging the matter from all possible angles this Court cannot sustain
the ad interim order of injunction mainly on the ground of suppression as also on
prima facie findings on other grounds pointed out above.
3 4 . Therefore, the appeal is dismissed. Since the ex parte ad interim order of
injunction was obtained from this Court by the appellants by suppression of facts, as
stated above, as also by misleading facts, stated above, this Court is of the opinion
that the appellants have not displayed good faith which is required of them while
seeking an ex parte order of injunction. As such, this appeal is dismissed with costs
assessed at 2000 G. Ms. Such costs are to be paid by the appellants in favour of
Calcutta High Court Legal Services Authority within a period of two weeks from
today.
35. This Court makes it clear that the injunction petition which is pending before the

18 (Page 7 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,

 Court below, may be heard out by the learned Trial Judge as early as possible and
the defendants may file its objection to the same within a period of one week after
the re-opening of the Court. Reply to the same be filed one week thereafter. All
attempts should be made by the learned Trial Judge to dispose of the injunction
petition within 31st December, 2004.
36. The appeal is dismissed with costs as indicated above.
37. Let urgent xerox certified copy of the judgment if applied for be given to the
learned Counsel for the parties expeditiously.
T.K. Dutt, J.
38. I agree.

© Manupatra Information Solutions Pvt. Ltd.

18 (Page 8 of 8) www.manupatra.com NATIONAL LAW INSTITUTE UNIVERSITY,