Tractors and Farm Equipment Ltd. vs Green Field Farm Equipments Pvt. Ltd. and Others

M. Thanikachalam, J.—The plaintiff in C.S. No. 20 of 2005 as applicant has filed O.A. No. 18 of 2005 seeking for an order of ad interim,

temporary, interim injunction restraining the respondents/defendants jointly and severally, their directors, servants, agents, employees, subordinates,

assigns, representatives, distributors, stockists, dealers and all other persons claiming through or under them or otherwise howsoever, from

manufacturing, selling, offering for sale, advertising directly or indirectly dealing in Tractors named Maharaja 3300 or any other name that are

substantial imitation and reproduction of the digital images, photographs, drawings of the applicant''s Hunter Tractor, thereby amounting to

infringement of applicant''s copyright or in any other manner whatsoever, pending disposal of the suit.

In the same manner, the applicant/plaintiff also filed O.A. No. 19 of 2005 praying to grant an ad-interim, temporary, interim injunction

restraining the respondents/defendants jointly and severally, their directors, servants, agents, employees, subordinates, assigns, representatives,

distributors, stockists, dealers and all other persons claiming through or under them or otherwise howsoever from directly or indirectly, in any

manner copyring adopting using or disclosing or exploiting of the applicant''s confidential information, technical data/specifications, electronic works

knowledge, know-how, with regard to Hunter tractor design or disclosing the same to any other person in any form or material and dealing in

tractors made on that basis and from exploiting the prototype clay or doing any other thing that are likely to lead to pass off the

respondents/defendants products as that of the applicant''s products or in any other manner whatsoever, pending disposal of the suit.

From the above prayers, it is seen O.A. No. 19/2005 is aimed to restrain the respondents/defendants in any manner copyring, adopting, using

or disclosing or exploiting the applicant''s confidential information, technical data, etc., not with reference to any specific vehicle viz., Tractor and it

is in general nature. On the other hand, the order sought for in O.A. No. 18 of 2005 is for injuncting the respondents/defendants dealing in

Tractors viz., Maharaja 3300 or any other name that are substantial imitation and reproduction of the digital image, photographs, drawings of the

applicant''s Hunter Tractor. Though two kinds of injunction are aimed by moving two O.As., the interim reliefs sought for in both the applications

are overlapping, mainly aiming the respondents/defendants from using the technical data specifications, know how, etc., which the second

respondent/defendant/gained or had access when he was under the employment of the plaintiff as per the terms and conditions of the appointment

order.

This Court at the time of admitting the suit, by going through the materials placed, granted interim injunction for four weeks as per the order

dated 17.1.2005 in O.A. No. 19/2005 alone, ordering notice in O.A. No. 18/2005. The interim injunction granted in O.A. No. 19/2005 is

extended as per the order of this Court dated 15.2.2005 until further orders.

Facts absolutely necessary for the disposal of the above two applications, in brief:

(a) The applicant/plaintiff is carrying on business in the field of Tractors, Farm Equipments, etc. for the last several decades having been established

in the year 1961. The plaintiff is also having a separate department called R & D and they are regularly inventing new model tractors through their

R & D, having contact or collaboration through foreign companies under contract for service to bring out innovative design. In order to achieve

that purpose, the plaintiff had conceived a project known as ''Hunter Program'' elsewhere in 2000, to develop a tractor with a new look to serve

the need of this country also. In that process, the development of Hunter Project was given to a UK Company called M/s. Omni Design

International Ltd. (hereinafter called ''Omni'') on a contract of service for valuable consideration. M/s. Omni was engaged under the supervision

and control of UK Company viz., Warwick Manufacturing Group i.e. a project supervisor company and principal service provider for the Hunter

Tractor designing program. The design of Hunter Tractor was done by M/s. Omni during the period from January 2000 to September 2001 on a

contract for service for valuable consideration. In this process, the plaintiff has incurred more than Rs. 3 crores for developing the new model

Hunter Tractor design.

(b) The team members of R & D Department employees of the plaintiff were associated with Omni to give various inputs for proceeding with the

style and design of Hunter Tractor. The said members of the team are privy to all confidential information regarding the Hunter Project including the

correspondence between Omni Design UK and the plaintiff, the exact design, features, the drawings, technical information, their uniqueness,

technical specification etc., as also the budget involved in the project and the time and effort taken by the plaintiff.

(c) On completion of style, design, an agreement was entered into with M/s. Hawtal Whiting Ltd., for design of sheet metal component, which

provided for a feasibility and packaging study to support the plaintiff''s Hunter Tractor Program and for supply of all CAD drawings for all metal

components written in Pro-Engineer version and recorded into a Compact Disc. M/s. Omni designed and fabricated a prototype tractor only

according to the requirements and specifications of the plaintiff. Thus, the plaintiff has exclusive intellectual property rights in the confidential

information, data, digital media, electronic work and other materials provided by the said UK companies to the plaintiff under contracts of service

for valuable consideration.

(d) The second defendant, who joined in the plaintiff company in the year 1999 directly involved in the Hunter Project in respect of vehicle design.

To improve the skill, the second defendant was deputed to UK during November 2000 in his capacity as Senior Member R & D of Hunter

Project and he interacted regularly with Omni in the development of Hunter Tractor. In view of his direct involvement as Senior Member R & D as

well as due to deputation to UK, he had all the information relating to the project including the drawings, digital photographs/images, etc. The

second defendant though acquired the skill being under the employment of this plaintiff and having trained in the Hunter Project, tendered his

resignation on 20.10.2003, which was accepted. Under the express condition available in the employment, he shall not disclose knowledge of

confidential/restricted nature obtained by him, which the plaintiff had developed or the plaintiff might have obtained during the course of the

employment for a period of three years after the cessation of service as per Clause 8 of the employment letter dated 7.10.1999.

(e) The plaintiff came to know, the first respondent/defendant plan to manufacture the Tractor called Maharaja 3300, which design is identical to

the plaintiff''s Hunter Tractor design in all aspects. Further enquiry by the plaintiff revealed, the first respondent/defendant company was

incorporated on 13.12.2002 in the name of Vijayalakshmi, wife of the second respondent/defendant as promoter, Founder Director. The second

respondent/defendant after resigning the service of the plaintiff in October 2002 joined the 1st respondent/defendant company as a Director in

November 2003. The 5th defendant, an employee of the plaintiff in R & D Department is also involved in the first respondent/defendant''s

company, since his wife Mrs. Sapna Mittal is one of the Directors, who is arrayed as D4.

(f) The respondents/defendants in order to deprive the plaintiff''s valuable right vested in the Hunter Tractor Model, committed several illegal acts

including breach of trust reposed on them even violating the conditions stipulated in the employment contract. The first defendant has issued

pamphlets/brochures as if Tractor Maharaja 3300 is having Patent Registration No. 194570, which is proved to be incorrect on verification. The

second defendant, who had unrestricted access to all the confidential information, details of the techniques/specification relating to the Hunter

Project, having acquired enough information to imitate the plaintiff''s invention, later promoted the first defendant company in the name of his wife.

(g) Comparison of two Tractors viz., Hunter Tractor and Maharaja 3300 would disclose, that they are identical in shape and configuration, thereby

showing that Maharaja 3300 is an obvious imitation of the plaintiff''s Hunter Tractor shape. The plaintiff having spent so much of amount for the

design, entered into a contract with foreign companies, had exclusive copy right in the digital images, photographs, drawings given by Omni, on

which basis he intended to launch a Tractor in the near future in which others cannot have any right. However, the respondents/defendants by their

illegal acts in imitating the Hunter Tractor, caused irreparable loss and damage to the business of the plaintiff and, therefore, the applicant/plaintiff is

constrained to file the suit for declaration and injunction. Thus, filing the suit, as indicated above, these two applications have been filed seeking

interim reliefs.

The above two applications are opposed by respondents/defendants 1 to 3 on the following grounds:

(a) The Maharaja 3300 Tractor that is being manufactured by the first respondent/defendant can be manufactured by any competent engineer

provided he has land and capital. The second respondent/defendants a Mechanical Engineer with excellent credentials and skills to manufacture

Tractor, need not rely on any of the drawings of the applicant/plaintiff. The applicant/plaintiff''s drawings are irrelevant for embarking on a

manufacturing process of a basic tractor. The reliefs sought for by the applicant/plaintiff is so inchoate that the interim reliefs claimed in the above

applications will, in law, be totally incapable of being meaningfully enforceable and consequently the reliefs in no way affect the manufacture of

Maharaja 3300 tractor. Further the respondents/defendants would submit that only as a measure of abundant caution and propriety that the

respondents/defendants are filing a reply to bring to the attention of this Court that the continuance of the manufacture of tractors by the 1st

respondent/defendant will not in any way breach the interim directions of this Court dated 17.1.2005 in O.A. No. 19 of 2005.

(b) The applicant, under the guise of enforcing their alleged copy right, cannot prevent the first respondent''s lawful business and stifle their activities

in order to achieve a monopoly in the manufacture of tractors. The suit filed under Sections 51, 55 and 62 of the Copy Right Act, as if the plaintiff

is the owner of the Hunter Tractor shape and configuration and technical specification, is not maintainable since the plaint has not disclosed, how

the plaintiff has become the owner of the alleged copy right. The Hunter Project was abandoned by the plaintiff as early as April 2002 due to non-

viability for the Indian Market on account of high manufacturing cost. The second respondent/defendant was forced to sign a resignation letter

under pressure and thereafter alone, he joined in the first respondent/defendant Company as a Director. After leaving the service of the

applicant/plaintiff, the second respondent/defendant embarked on designing the Maharaja 3300 Tractor, prepared all drawings and designs with

the help of other engineers and draftsmen; over which the applicant/plaintiff company has no semblance of right. Therefore, there could be no basis

for comparison with the Maharaja 3300 Tractor, since the Hunter Project was abandoned.

(c) The Hunter Tractor remains an incomplete concept, it is not a production model and this being the position, there is no question of the first

respondent/defendant passing of their products, as that of the applicant''s products. Even as per the agreement said to have been entered into

between the applicant and M/s. Omni, it is only contract for service, which will not confer the copy right of the accepted design, the further fact

being, there was no actual assignment also, if at all, it is only the owner, licence holder or assignees of the Copy Right have the locus standi to

initiate legal action against the tort feasors and certainly not the applicant, who has not acquired any copy right over the alleged Hunter Tractor

design. The second defendant did not have access to any confidential data or information of the applicant pertaining to the Hunter Tractor.

Therefore, urging the confidentiality clause No. 8 in the appointment order dated 7.10.1999, no injunction could be sought for against the second

respondent.

(d) The first respondent/defendant had applied for registration of a design, which was granted by the Registrar of Designs, Calcutta in No.

194570, which was gazetted and in view of the same, the first respondent/defendant alone is the proprietor of the said design as contemplated u/s

11 of the Designs Act. However, as such, the first respondent/defendant is not manufacturing Tractors of the design, forming subject matter of

registered design No. 194570, whereas they are manufacturing different tractor called Maharaja 3300, which is not registered under the Designs

Act, 2000. The first respondent/defendant is also not going to commercially exploit the design in Design Registration No. 194570 and this being

the position, no question of injunction could be issued against the respondents/defendants, since the balance of convenience is squarely in favour of

the first respondent, not favouring the plaintiff, who aims to create a monopoly in the tractor market. The design, engine, hydraulics, electricals or

transmission of Maharaja 3300 Tractor, which were designed by the first respondent''s team of engineers are not similar to that of the hydraulic

tractor, which has not seen the field, but only in the clay model and in this view also, no injunction could be sustained. Thus, on behalf of the

respondents/defendants, a prayer was made to dismiss both the applications.

Heard the learned senior counsel for the applicant, Mr. T.R. Rajagoplan and the learned senior counsel for the respondents/defendants, Mr. R.

Gandhi.

The points for determination are:

(i) whether the applicant/plaintiff company is having any copy right over the Hunter Tractor which could be enforced.

(ii) whether the second respondent/defendant had access to the information of design pertaining to Hunter Tractor.

(iii) whether the second respondent/defendant had violated the confidentiality clause while manufacturing Maharaja 3300 Tractor.

(iv) whether the applicant is entitled to an order of injunction as prayed for in both the applications.

Points:

The applicant/plaintiff is in the field of manufacturing Tractors and Farm Equipments from the year 1961 or so, is not in dispute. The second

respondent/defendant was one of the employees of the thus, prima facie it is shown, when the applicant/plaintiff company had the idea of

developing a Tractor called ''Hunter'', the second respondent/defendant had direct access and information regarding the said program and it should

include the design and other related matters in respect of the said tractor also, though he had denied in the counter.

The second respondent/defendant, tendered his resignation, accepted by the applicant/plaintiff company, relieved from the post admittedly on

and from 20.10.2003. The first respondent/defendant, company by name Green Field Farm Equipments Private Limited appears to have been

promoted by Tmt. Vijayalakshmi, wife of the second respondent/defendant and the same was incorporated on 13.12.2002. Till the second

respondent/defendant/resigned from the plaintiff company and joined in the first respondent/defendant/company on November 2003, there was no

much activities in the first respondent/defendant/company. Only thereafter, it appears, defendants 1 to 3 have manufactured a Tractor christening

the same as Maharaja 3300 as if it is having Patent Registration No. 194570. On seeing the pamphlets/brochures published by the first

respondent, when the applicant/plaintiff searched in the office, it came to their knowledge that the above said patent relates to a process for

manufacturing of non-swallowable aluminium applicant/plaintiff company, having joined in 1999 as Technical Specialist (R & D) and thereafter, he

was promoted and confirmed as Senior Member R&D with effect from 1.6.2000. For the reasons best known to the parties, the second

respondent/defendant/resigned from the plaintiff company on 20.10.2003. When the second respondent/defendant was under the employment of

the applicant/plaintiff company, admittedly he was deputed to UK during November 2000 in his capacity as Senior Member R & D to Hunter,

which is also disclosed by number of correspondences, which enlarged from UK Companies, not challenged. It is also an admitted position, that

the applicant/plaintiff company, having conceived a project known as Hunter Program for the purpose of producing a Tractor called Hunter

Project, had tie up with UK Companies called M/s. Omni and M/s. Hawtal Whiting Limited. To design the Hunter Tractor, according to the

applicant/plaintiff, they have incurred more than Rs. 3 crores. As disclosed by the documents available in the typed-set, the second respondent,

while in service, was deputed to UK in his capacity as Senior Member R & D of Hunter Project for the purpose of developing the design.

Whenever any communications emanated from M/s. Omni as well as M/s. Hawtal Whiting Limited, copies were also marked to the second

respondent, as seen from documents produced in the typeset phosphide tablets and not connecting with Tractor, thereby showing there was some

attempt on the part of the respondents/defendants to divert the attention of the applicant/plaintiff also, whether they could easily find out or not,

whether it was patent registration number or design registration number, as the case may be. The further investigation by the applicant/plaintiff

revealed that the first respondent/defendant has registered a design in Design No. 194570 for tractor Maharaja 3300. After obtaining the designs

relating to Design No. 194570, to the utter surprise of the applicant/plaintiff, they came to know, that the design developed for the

applicant/plaintiff company, under the Hunter Tractor Program was imitated completely by respondent/defendants 1 & 2, and in this way, to

prevent the further illegal act of respondents/defendants 1 to 3 as said above, the suit came to be filed, in which the applications are also filed.

Mr. T.R. Rajagopalan, the learned senior counsel for the applicant, drawing my attention to the typed-set filed by the applicant would contend

that the plaintiff, having spent more or less Rs. 3 crores, alone had developed the design for Hunter Tractor, which is now sought to be utilized by

the ex-employee of the plaintiff company, which should amount to fraud as well as theft of intellectual property right and the same should be

restrained, since the plaintiff had acquired copy right over the design also. Pages 1 to 6A of the original typed-set depicts the Hunter Tractor on

various angles, which was designed at the instance of the applicant/plaintiff though not manufactured and marketed. For the above said purpose,

the applicant/plaintiff has obtained quotation on 6.4.2000 from Omni, which was confirmed by the plaintiff on 19.6.2000. Thereafter, there was an

agreement between the applicant company and Ricardo MTC Limited for the purpose of producing a series of alternative concept designs for a 25

HP Tractor Transmission, final drive and lift linkage. In order to participate in the design program, admittedly the second respondent/defendant

was deputed elsewhere in the later part of year 2000, as disclosed by the letter dated 11.7.2000 also. Later the plaintiff also wrote a letter to

Warwick Manufacturing Group, UK to engage the service of M/s. Omni. Whenever any communication emanated from M/s. Omni or Hawtal

Whiting Engineering Ltd. or Warwick Manufacturing Group, a copy was also marked to the second respondent/defendant, thereby, indicating that

he was closely associated and connected with Hunter Design. Thus from the correspondence between the applicant/plaintiff company and the

above said foreign companies, it is clear that the applicant/plaintiff company alone had made all efforts to get a design for Hunter Tractor spending

considerable amount, even involving the second respondent/defendant also, thereby showing the second respondent/defendant should have the first

hand information, about the design and other related matters of the said Tractor design.

M/s. Omni has sent a communication to the applicant/plaintiff, wherein it is stated:

In this regard we wish to re-emphasize and confirm that all confidential information, viz Designs, Copyrights, Intellectual Property Rights,

Drawings, Technical Specifications, Technical Data, Know-How and Electronic transmission provided to you, by us, under the above said project

have been completely transferred and assigned to you.

thereby at present, prima facie showing that M/s. Omni had transferred the right to the applicant/plaintiff, though the exact date is not known. From

the above facts, at prevent it is clear, that the design for Hunter Tractor came into existence only at the initiative of the applicant/plaintiff with the

help of M/s. Omni and other companies, though as per the design, as on this date, as submitted, no tractor has been produced, and marked.

The first respondent/defendant registered the design intended for Hunter Tractor in Design No. 194570, which is available from Pages 20 to

26 of the Additional Typed set of documents filed by the plaintiff. In the original typed set, the design for Hunter Tractor is given in pages 1 to 6A.

Comparison of the Hunter Tractor Model and Maharaja 3300 is available in the Additional Typeset Pages 48 to 52. Even for a naked eye, it is

visible without any strain that the design produced by M/s. Omni for the benefit of the plaintiff alone, was copied and imitated by the ''1st

respondent, while registering the design for Maharaja 3300 in Design No. 194570. Practically, except the name plate, all other features are one

and the same including the shape, appearance of the Tractor from different angles, bumper lights, seats, etc. Thus, prima facie, it is made out that a

design designed and developed at the request of the applicant/plaintiff by M/s. Omni is copied and registered by the first respondent/defendant

probably at the instance of the second respondent/defendant in the name of Maharaja 3300. Because of the access, the 2nd respondent/defendant

had with this programe, while designing Hunter and probably taking advantage, such tractors are not manufacture, he alone should have copied

and registered the design in the name of the 1st respondent, which is owned by his wife. Thus, I am fully satisfied, though no Tractor has been

manufactured in the name of Hunter by the applicant/plaintiff, taking advantage of his access to the said project, having all the information, the

second respondent/defendant very cleverly registered the said design in the same of the first respondent/defendant in Design No. 194570. Thus

concluding, we have to see whether it would amount to offending the copy rights of the plaintiff, if so whether the respondents/defendants should

be restrained by an order of injunction.

Mr. R. Gandhi, the learned senior counsel appearing for the contesting respondents/defendants would contend that the first

respondent/defendant has registered the design u/s 10 of the Designs Act, 2000 and in view of the admitted registration, at present, as

contemplated u/s 11 of the Designs Act, when a design is registered, the registered proprietor of the design shall have copy right in the design

during 10 years from the date of registration and this being the position in law, against the first respondent, who has registered the copy right, no

injunction could be granted. The very fact that a design so registered would not give absolute right over the said design could be seen from Section

19 of the said Act, which contemplates cancellation of registration also. u/s 19(1) of the Designs Act, any person interested may present a petition

for cancellation of the registration of the design to the Controller, thereby showing that an opportunity is available to a person, who claims some

right over the design, is entitled to agitate the same. The learned senior counsel for the applicant/plaintiff would contend that the applicant/plaintiff

has applied for cancellation of certificate elsewhere in November 2005 and the same is also pending. Evidencing the same, he has also produced a

letter dated 30.11.2005. This being the position, at present, only on the basis of the registration of the design for Maharaja 3300 alone,

respondents/defendants 1 & 2 cannot claim exclusive right over the design and despite the registration, the plaintiff can agitate the right as seen

from the decision in Niky Tasha India Pvt. Ltd. v. F.G. Gadgets Pvt. Ltd. AIR 1985 Del 136 : 1984 (4) PTC 87 (Del) , wherein it is held:

Where the design is of a recent date no injunction should be granted. More so, when there is a serious question as to the validity of the design to

be tried in the suit and an application for cancellation has been made.

thereby showing when the design registration is in dispute, no injunction should be granted, that too when the design registration is of a recent one.

In the case on hand, as disclosed, before the design is registered by the first respondent, it was in existence or it was prepared at the request of

the plaintiff by M/s. Omni Design. Therefore, when the cancellation of design is pending as claimed by the applicant/plaintiff, the registered owner

should show that the design is new or original and it was not available with anybody prior to the registration. As observed by a Full Bench of Delhi

High Court, in Metro Plastic Industries (Regd) v. Galaxy Footwear New Delhi 2000 PTC (20) 1, in the absence of an application for cancellation

of the design, such a right can be enforced and no defence can be taken based on a ground of cancellation. But once an application for cancellation

has been made, then it would not be open for the Court trying the Suit u/s 53, to turn a blind eye to the pendency of such Application. In that case

the Court must take into consideration all relevant facts which would include the grounds raised in the Application for cancellation also and the

Court must then decide whether or not to grant an injunction in favour of registered owner.

Because of the above legal position, considering the fact in this case that a petition has been filed to rectify the design registration, the

submission made by the learned senior counsel, Mr. R. Gandhi that the first defendant is the owner of the design, is not acceptable to me at present

and despite the design registration under the Designs Act by the first respondent, a suit could be well maintained.

The learned senior Counsel, Mr. T.R. Rajagopalan inviting my attention to a decision of Puneet Industrial Controls Pvt. Ltd. v. Classic

Electronics (1997) PTC (17) 161 would contend, that the applicant/plaintiff has made out a prima case that the design and drawings intended for

Hunter Tractor are the products of the applicant/plaintiff company, whereas no material has been placed or shown by the contesting

respondents/defendants that they have designed the same by Research and Development activities and all of a sudden mere registration of the

design alone will not confer any copy right upon them. In the case involved in the above decision, the plaintiffs have established that they are the

original owners of the copy right, whereas the defendants are not able to produce any drawings or materials to show they are the original owners.

This is the position in the case on hand also. The materials produced on behalf of the applicant/plaintiff would indicate that they have not only spent

the considerable amount in acquiring the design for Hunter Tractor, but also entered into an agreement with foreign companies and got the

assignment also. Except the argument advanced by the learned senior counsel that first respondent/defendant is the owner of the design, and the

production of the registration number, which is under challenge at present, no material has been produced to show that the second

respondent/defendant on his own developed the design and, therefore, the applicant/plaintiff cannot have any better claim over it. Thus, considering

the materials in the case involved in the above decision, the defendant was injuncted, which was confirmed in the appeal also.

The fifth respondent/defendant has written a letter on 18.1.2005, as seen from the additional typeset at page, 30, wherein he was stated that

the second respondent/defendant is actively involved in the project to manufacture new tractor on the basis of technical information, electronic

images and specifications provided by UK Companies to TAFE in respect of Hunter Project and he has also provided to the second

respondent/defendant with details of suppliers of spare parts and components such as Shanthi Gears, Coimbatore in addition to stating that twice in

a month he used to meet Raja in respect of the proposed tractor project, thereby showing one of the present employees of the applicant/plaintiff,

whose wife is one of the Directors of the first respondent/defendant disclosing the fact that the second respondent/defendant had utilised the know

how of the Hunter Project Scheme for manufacturing Maharaja 3300.

It is an admitted position that while the second respondent/defendant entered into service with the applicant/plaintiff company, he had executed

a letter dated 7.10.1999 and the Clause 8 therein reads:

In the course of your employment with the Company, by virtue of the position held by you or otherwise, if you have acquired or may acquire such

knowledge of confidential/restricted nature which the Company itself has developed or may develop and/or which the company might have

obtained or may obtain through technical collaboration/its subsidiaries/licenses, such confidential/restricted knowledge howsoever obtained by you

shall not be disclosed or allowed to be disclosed to other parties in the interest of the company''s business. Therefore, you shall not, at any time

during the term of your service with the Company or within three years after the cessation of such service, make available or accessible such

knowledge to any other party, directly or indirectly.

thereby binding the second respondent/defendant that within three years after the cessation of service, he should not make available or accessible

such knowledge to any other party directly or indirectly. In view of the admitted position that the second respondent/defendant involved in the

Hunter Project and he was also deputed to UK, not denied in the counter affidavit, it should be held, which is also supported by the letter written

by D5, that the second respondent/defendant had access to the Hunter Program, had knowledge about the design which alone should have been

the source for registering the design and producing the Tractor in the name Maharaja 3300. The agreement is also not disputed. In this view, we

have to see what is the legal position.

In Zee Telefilms Ltd. and Film and Shot and Another Vs. Sundial Communications Pvt. Ltd. and Others, a Division Bench of Bombay High

Court, has held that the defendants therein had committed not only breach of copy right and misused the confidential information. As pointed out

by me, the Hunter Tractor design as well as Maharaja 3300 design registered under the Designs Act are exactly one and the same except the

name, thereby showing that the second respondent, who was in the service of the applicant/plaintiff, might have unlawfully, copied the original work

of the applicant/plaintiff, which he got assigned from M/s. Omni. If the design registered was that of the original work of the second respondent,

not connected with Omni, then the applicant/plaintiff cannot have any grievance. Because of the similarity in the two tractor designs made out, the

reasonable inference that could be drawn is that the second respondent/defendant has not only committed breach of trust, but also misused the

confidentiality and such person should be restrained by an order of injunction, failing which the plaintiff would be put to irreparable loss, since only

at the instance of the applicant/plaintiff, the design was formulated, assigned to him.

In IPLR INTEC Polymers Ltd. v. Mr. Rajendra Eknathrao Tambe IPLR 2005 Jan 48 a similar question came for decision and it is held that

there was breach of confidentiality and, therefore, such person, who had violated the same is liable to be injuncted. The respondents/defendants

have not produced any document informing that they have employed any engineers, made research and development for the design so as to say

that their design, which is registered should have independent source, nor connected with the Hunter Project, which was admittedly intended for

the plaintiff on their spending, having collaboration with foreign companies.

In Merit Scada Automation Pvt. Ltd. Vs. Sanmar Industrial Systems Ltd. and R. Vinoth Kumar, , a Division Bench of this Court has taken the

view that a person, who has violated the terms of secrecy agreement should be injuncted, which ratio is squarely applicable to the present case

also.

Mr. R. Gandhi, the learned senior counsel for the contesting respondents/defendants would contend, that the first respondent/defendant is not

manufacturing the tractor of the design forming subject matter of registered design No. 194570, but is manufacturing a different tractor called

Maharaja 3300, which is not registered under the Designs Act and in this view, at present, since there is no imitation, the applicant/plaintiff is not

entitled to an order of injunction. As rightly submitted by the learned senior counsel for the applicant/plaintiff, only after the filing of the suit, it seems

some changes were made in the shape of the Tractor said to be manufactured by the first respondent, most probably retaining other specifications

meant for Hunter Tractor. As proved, originally respondents/defendants 1 & 2 made an attempt to imitate that Hunter Tractor, but in view of the

injunction granted probably, they are attempting to change the same, thereby in a way confusing the customer also and this being the position, to

prevent this kind of confusion, the respondents/defendants should be restrained by an order of injunction from manufacturing the Tractor imitating

as that of Hunter Tractor and not otherwise.

Mr. R. Gandhi, the learned senior counsel for the contesting respondents/ defendants further contended, that assuming that the

respondents/defendants have adopted the design of Hunter Tractor, the same cannot be questioned by the applicant/plaintiff, since they have not

produced any materials to show that the copy right of the design was conferred upon them, either by transfer or assignment as the case may be and

if at all, the original owner of the copy right alone could challenge the same and in this view, the claim of the applicant/plaintiff should fail. In the

plaint as well as in the affidavit, it is categorically stated that the design of Hunter Tractor was done by M/s. Omni on a contract of service from the

plaintiff for a valuable consideration and, therefore, the plaintiff has exclusive intellectual right in the confidential information, data, digital media,

electronic work and other materials provided by the said UK companies to the plaintiff under contracts of service for valuable consideration. The

above averments are not seriously challenged as seen from the common counter affidavit, though it is specifically stated that the applicant/plaintiff is

not the owner of the copy right. In view of the established position, by producing materials prima facie, that only at the instance of the

applicant/plaintiff, M/s. Omni had designed the Tractor and assigned the same to the applicant/plaintiff, and in this view, in my considered opinion,

at present it should be held that the plaintiff is the exclusive owner of the said copy right and when the same is sought to be infringed by the person,

who had access to the said design, he should be restrained by an order of injunction.

Section 55 of the Copyright Act, 1957 gives remedy only to the owner of the copy right for the infringement of a right. Section 61 of the Copy

Right Act says, in a civil suit, where a claim is made on the basis of the infringement of copy right, the owner of the copy right shall be made as

defendant unless the Court otherwise directs, where such owner is made as defendant, he shall have the right to dispute the claim of exclusive

licensee. On the above said basis, it was urged on behalf of the contesting respondents/defendants that if at all, Omni should be considered as the

owner of the copy right and in its absence, the suit itself is not maintainable as if that right is infringed. At present, the document produced on behalf

of the applicant/plaintiff would indicate that there was an assignment of right in favour of the applicant/plaintiff conferring ownership and, therefore,

to decide these injunction applications, the above said two provisions will not come in any way as an impediment and the non-joinder of Omni will

not affect the right of the applicant/plaintiff, since the right is otherwise established.

Section 18 of the Copyright Act, 1957 empowers the owner of a copy right to assign the same and Section 19 contemplates mode of

assignment. Section 19(4) reads:

Where the assignee does not exercise the rights assigned to him under any of the other sub-sections of this section within a period of one year from

the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise

specified in the assignment.

On the basis of the above said provision, the learned senior counsel for the respondents/defendants would contend that since the applicant/plaintiff

has not exercised the rights assigned to him viz., in manufacturing the tractor, as on this date, such right shall be deemed to have been lapsed and in

this view also, the applicant/plaintiff is not entitled to claim any right. On behalf of the applicant/plaintiff, though a document has been produced as if

Omni has assigned the right, which I have already pointed out, at present, the terms and conditions of the assignments are not made available,

Therefore, while deciding the interlocutory application, when the assignment is prima facie made out, it may not be possible to say at present

whether such right had lapsed or not as contemplated u/s 19(4) of the Copyright Act and if at all, the same has to be decided at the time of the

trial.

For the foregoing reasons, in my considered opinion, the applicant/plaintiff has made out a case prima facie, as well as the balance of

convenience in its favour showing the infringement of copy right as well as the Act of the second respondent, viz., breach of confidentiality and,

therefore, in both the applications, the applicant/plaintiff is entitled to interim orders as prayed for, pending disposal of the suit. Hence, granting

interim injunction in O.A. No. 18 of 2005, interim injunction granted in O.A. No. 19 of 2005 is made absolute.

It is made clear that the injunction so issued restraining the respondents/defendants not to substantially imitate the drawings of the Hunter

Tractor Design Photographs, cannot be used by the applicant/plaintiff, if the respondents/defendants are manufacturing tractors of their own, not

connected with the digital images, photographs of Hunter Tractor either in the name of Maharaja 3300 or any other name, since there cannot be

any blanket injunction against anybody from preventing the production of the Tractor of his own design and configuration, not offending the rights

of others.