Pandrol Limited & Anr. v. Patil Rail Infrastructure Pvt. Ltd. & Ors.

5.8. Through their long, extensive and continuous use and extensive sales promotion of the products marketed under the ‘PANDROL’ mark, the plaintiffs have gained reputation and goodwill, which is also reflected through its sales turnover. The plaintiff no.1 has also been conferred with awards for their products and services.

5.9. The defendants have infringed the copyrighted work of the plaintiff no.1 by copying the drawings of the plaintiff no.1 and submitting the same to the Madhya Pradesh Metro Rail Corporation Limited [hereinafter ‘MPMRCL’] in response to a railway tender floated by them. A comparison of the drawings of the parties is reproduced in paragraph 53 of the plaint.

5.10. The defendants have also infringed the trademark ‘PANDROL’ by submitting the impugned drawings under the said mark in response to the tender floated by the MPMRCL.

BANSAL

5.11. Accordingly, the present suit has been filed seeking a decree of permanent injunction along with other ancillary reliefs.

CASE SET UP IN THE WRITTEN STATEMENT

6. The case set out in the written statement is as under:

6.1. The defendant no.1 is in the business of manufacturing various railway track components such as concrete sleepers, rail fastening components for normal tracks, elevated and underground tracks for metro railways and ballastless tracks suitable for high-speed lines, bridges, tunnels and the like.

6.2. The engineering drawings for the ‘Double Resilient Base Plate System’ submitted by the defendant no.1 are as per the technical specifications, dimensions and features given by the MPMRCL for „Design, Supply, Installation, testing and Commissioning of Ballastless Track of Standard Gauge, including Supply of Fastening System…for Bhopal Metro Rail Project‟ and in conformity with the guidelines issued by the Ministry of Railways, as amended from time to time. Therefore, the same can be supplied by any entity including the defendant no.1.

6.3. The Railway Board, Ministry of Railways has approved a total of six fastening systems for ballastless tracks, any of which can be used by metro railways/mass rapid transit systems [hereinafter ‘MRTS’] in India. All six fastening systems are designed by different companies/entities and exclusive rights can be claimed by such companies/entities only if registrations are obtained thereof. Mere approval of a fastening system by the Ministry of Railways does not BANSAL confer any statutory right in favour of the company/entity who has developed and designed such system.

6.4. The DBRAS purported to have been developed and designed by the plaintiff no.1 is not registered under the Patents Act, 1970 or the Copyright Act, 1957 or the Designs Act, 2000.

6.5. The drawings of the plaintiff no.1 are in the public domain, being easily available on the internet, as also on the official website of the Ministry of Railways.

6.6. No copyright subsists in the drawings of the plaintiff as per Section 15 of the Copyright Act, 1957 read in conjunction with the Designs Act,

2000.

6.7. The defendant no.1 has not commercially exploited the trademark ‘PANDROL’ of the plaintiff no.1. The trademark reflected on the drawings submitted by the defendant no.1 to various contractors was only an inadvertent error on part of the defendants no.2 to 4, who mistakenly left the said mark on the drawings while converting them from PDF files to AutoCAD files. The said inadvertent error was rectified as soon as it was brought to the attention of the defendants and the drawings were re-submitted to the contractors without the ‘PANDROL’ mark.

6.8. Even otherwise, no manufacturing or production of the Double Resilient Base Plate Assembly System components has been undertaken by the defendant no.1. Therefore, no case for infringement of the trademark of the plaintiff no.1 or passing off is made out.

7. The plaintiffs have also filed a replication, wherein, in addition to the pleadings put forth in support of the case set up in the plaint, it has been BANSAL submitted that the intention of the plaintiffs was not just to safeguard its economic interest by filing the present suit but also to prevent the MPMRCL from being deceived by the defendants using the copyrighted drawings and trademark of the plaintiffs.

SUBMISSIONS ON BEHALF OF THE PLAINTIFFS

8. In support of the case set up in the plaint, the senior counsel appearing on behalf of the plaintiffs made the following submissions:

8.1. The defendants have infringed the copyright and trademark ‘PANDROL’ of the plaintiff by copying the drawings of the plaintiffs in toto. The said fact has been admitted by the defendants in paragraph 21 of the written statement and also affirmed in the report dated 22nd September, 2022 filed by the Local Commissioner.

8.2. Clause 4.[2] of the tender floated by the MPMRCL specifically provides that a tenderer offering the supply of fastening systems is required to provide, inter alia, the approval letter obtained from the RDSO/Ministry of Railways along with the approved drawings of the fastening system, certificate of performance and the like. Therefore, the subject matter of the tender was in respect of a generic product and not specifically the plaintiffs’ product. Hence, there was no justification for the defendants to unauthorizedly copy the drawings of the plaintiffs.

8.3. Even if it is assumed that the tender of the MPMRCL required copying of the approved drawings of the plaintiffs, there was no basis for the defendants to expressly provide that the drawings submitted by BANSAL them have been drawn, checked, reviewed and approved by their employees, the defendants no.2 to 5.

8.4. The drawings of the plaintiffs are not covered under the ambit of ‘design’ as defined in Section 2(d) of the Designs Act, 2000 for the following reasons: i. The drawings of the plaintiffs constitute ‘artistic work’ as defined under Section 2(c) of the Copyright Act, 1957. ii. The drawings of the plaintiffs are a mode/principle of construction of a fastening system, which is expressly excluded from the definition of the word ‘design’ as provided under Section 2(d) of the Designs Act. iii. There is no visual appeal to the drawings of the plaintiffs which would qualify the drawings of the plaintiff to fall in the category of ‘design’.

8.5. Since the drawings of the plaintiffs do not constitute a „design, which is capable of being registered under the Designs Act, 2000‟ the reliance placed on Section 15(2) of the Designs Act, 2000 by the defendants, is misplaced.

SUBMISSIONS ON BEHALF OF THE DEFENDANTS

9. In support of the averments made in the written statement, senior counsel appearing on behalf of the defendants made the following submissions:

9.1. The drawings of the plaintiffs are in the public domain since 2010, when they were first published in the United Kingdom. The drawings BANSAL have also been published on the RDSO website as attachments to the approval letter dated 7th October, 2011.

9.2. The tenderer was required to match completely with the drawings and specifications of the test assembly. Reliance in this regard is placed on Clauses 2 and 4 of the approval letter dated 7th October, 2011 issued by the Ministry of Railways.

9.3. The Ministry of Railways has approved six fastening systems, which can be supplied by any vendor on the basis of the approved drawings.

9.4. Plaintiffs do not have any copyright over their drawings within the meaning of Section 14 of the Copyright Act, 1957. In fact, the drawings of the plaintiffs constitute „design capable of being registered‟ under the Designs Act, 2000.

9.5. The plaintiffs have already supplied more than 21,00,000 fastening sets and 50,00,000 elastic rail clips in various projects. Reliance in this regard is placed on paragraphs 14, 25 and 26 of the plaint. Therefore, no copyright subsists in the drawings of the plaintiffs as per Section 15(2) of the Copyright Act, 1957.

ANALYSIS AND FINDINGS

10. I have heard the rival submissions.

11. At the outset, I will address the submissions made on behalf of the defendants that the plaintiffs could not claim any copyright in the aforesaid drawings in light of Section 15(2) of the Copyright Act, 1957. To consider the aforesaid submissions, a reference may be made to the relevant provisions of the Copyright Act as well as the Designs Act.

12. Relevant provisions of the Copyright Act are as under: BANSAL “2. Interpretation.— In this Act, unless the context otherwise requires,— (c) “artistic work” means,—

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (d) “author” means, —

(iii) in relation to an artistic work other than a photograph, the artist;

(m) “infringing copy” means—

(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in the form of a cinematographic film;

13. Works in which copyright subsists.— (1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,— (a) original literary, dramatic, musical and artistic works;

14. Meaning of Copyright.— For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—

(c) in the case of an artistic work,—

[(i) to reproduce the work in any material form including— (A) the storing of it in any medium by electronic or other means; or (B) depiction in three-dimensions of a two-dimensional work; or BANSAL

(C) depiction in two-dimensions of a three-dimensional work;]

(ii) to communicate the work to the public;

15. Special provision regarding Copyright in designs registered or capable of being registered under the Designs Act, 2000.— (1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 2000. (2) Copyright in any design, which is capable of being registered under the Designs Act, 2000 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.”

13. Relevant provisions of the Designs Act, 2000 are as under: “2. Definitions.—In this Act, unless there is anything repugnant in the subject or context,— (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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.” BANSAL

14. Senior counsel on behalf of the defendants has submitted that that since the drawings of the plaintiffs are capable of being registered under the Designs Act and based on the said drawings, products have been produced by the plaintiffs more than fifty times through an industrial process, no copyright can be claimed by the plaintiffs in respect of the said drawings in terms of Section 15(2) of the Designs Act. In support of this submission, senior counsel for the defendants has placed reliance on various judgments, which are discussed below.

15. In Microfibres Inc v. Girdhar And Co. and Anr., 2009 SCC OnLine Del 1647 a Division Bench of this Court was seized of similar issues with regard to the interplay of various sections of the Copyright and Designs Act in order to determine whether a work is capable of being registered under the Designs Act, by virtue of which no copyright in respect thereof could be claimed as per Section 15(2) of the Copyright Act. After comparing the relevant provisions of the Designs Act and Copyright Act, the Division Bench observed as under: “22. Therefore, it is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three-dimensional material form using an element, such as a metal sheet. When the copyright holder of an original artistic work reproduces the same in another material form, he may, or may not do so by employing an industrial process or means which may be manual, mechanical or chemical, separate or combined, on an article. If the reproduction of the original artistic work is done by employing an industrial process, as aforesaid, on an article, and the same results in a finished article which appeals to the eye as adjudged solely by the eye, then the features of shape, BANSAL configuration, pattern, ornament or composition of lines or colours applied to the article by the industrial process constitutes a “design”, within the meaning of this expression as defined under the Designs Act.

23. There is, therefore, a clear distinction between an original artistic work, and the design derived from it for industrial application on an article. This position is clarified by the use of the expression “only” before the words “the features of shape, configuration, pattern, ornament or composition of lines or colours” in the definition of “design” in the Designs Act. Therefore, the original artistic work, which may have inspired the creation of a design, is not merely the feature of shape, configuration, pattern, ornament or composition of lines or colours which are created to apply to an article by an industrial process. The original artistic work is something different from the design. Secondly, the definition of “design” expressly excludes, inter alia, any artistic work defined in section 2(c) of the Copyright act, 1957.

XXX XXX XXX

30. Sub-section (2) of section 15 deals with the situation where the design, which is capable of being registered under the Designs Act, is not so registered. It provides that copyright in such a design shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or with his licence, by any other person. It is clear to us that the Parliament in Section 15 of the Copyright Act was dealing with the aspect of copyright in a registered/registrable design, as understood in the Copyright Act and not the Designs Act. Else, there was no need to deal with this aspect in the Copyright Act. The same would have been dealt with under the Designs Act. Therefore, the law tolerates only a limited industrial, or shall we say commercial, exploitation of the original artistic work by the application/reproduction of the said work in any other form or reproduction of copies thereof in exercise of the rights under Section 14(c)(1) and 14(c)(iii) of the Copyright Act. Beyond the specified limit, if the design derived from the original artistic BANSAL work is exploited (i.e. if the design is applied more than 50 times by an industrial process on an article) the copyright in the design ceases unless it is registered under the Designs Act.

35. However, there can be no quarrel with the plea of Shri Ramachandran that the operation of Section 15(2) of the Copyright Act does not exclude from the ambit of Copyright protection either the original “artistic work” upon which the design is based or the design which by itself is an artistic work. It cannot be disputed that the original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection. This is also evident from the definition of the design under Section 2(d) of the Designs Act. This, in our view, in fact is a factor which would go against the appellants in construing the nature of protection to be given to the original artistic work such as a painting, as contrasted with the applied artistic work that is the design, which in the present case does not mean the intermediary medium such as a mould, engraving devised/produced only to enable industrial application of the painting to produce the furnishing products of the appellant. Thus, while the original painting would indeed be entitled to the copyright protection, the commercial/industrial manifestation of such paintings such as the design derived from and founded upon the original painting for the purpose of industrial production of furnishings would only be covered by the limitations placed in Section 15 of the Copyright Act and would get protection if registered as a design under the Designs Act but would enjoy lesser period of protection in case of a registered design.

36. This clearly shows that the legislature intended that even if the artistic work such as a painting has been used as the basis for designing an industrially produced object for commerce, such as the furnishing in the present case, nevertheless the original painting would indeed enjoy full BANSAL copyright protection, while the result of the industrial application of such painting, namely, the design used in the industrial production of the ultimate product shall enjoy lesser period of protection as stipulated under the Designs Act provided it is registered as a design under the Designs Act. Thus, we are of the view that an original artistic work initially acquires protection under the Copyright Act as an „artistic work‟ or else the protection under the Designs Act qua the product created from the artistic work when industrially applied.”

16. The law was summarised by the Division Bench in paragraph 46 of the judgment, which is set out below: “46. We thus summarize our findings as follows:— a. The definition of „artistic work‟ has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal. b. The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright act. c. It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three-dimensional material form using an element, such as a metal sheet. d. The design protection in case of registered works under the Designs Act cannot be extended to include the copyright protection to the works which were industrially produced.

BANSAL e. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to design activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure art. f. The original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant. g. This is precisely why the legislature not only limited the protection by mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not so registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his licensee. h. In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se. i. If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an BANSAL industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

17. What emerges from a reading of the judgment of the Division Bench is that an original ‘artistic work’ is different from a ‘design’. The original drawings/ ‘artistic work’ can lead to a ‘design’. In other words, a ‘design’ may be derived from the original drawings. Therefore, even if the original drawings/ ‘artistic work’ is used to industrially produce an article, the original drawing/ ‘artistic work’ would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection.

18. In Mody Pumps Inc and Anr. v. Sovereign Pumping Solutions Provate Limited and Anr., MANU/MH/1496/2022 a Single Bench of the Bombay High Court was dealing with a similar issue of copyright infringement in relation to engineering drawings of water pumps and the issues that arose were whether the aforesaid engineering drawings constitute ‘artistic work’ and whether the plaintiffs have copyright in the same. Relying upon the judgment of the Division Bench in Microfibres (supra), the Bombay High Court held that drawings are ‘artistic works’ within the meaning of Section 13(1)(a) of the Copyrights Act and are therefore, excluded from the purview of Section 2(d) of the Designs Act. It was observed by the Bombay High Court that in terms of Section 2(d) of the Designs Act, 2000, design relates only to shape, configuration, pattern, ornament or composition of lines or colours applied to an article, which, in the finished article, would have a visual appeal. Further, ‘design’ under BANSAL Section 2(d) does not include any mode or principle of construction or anything which is, in substance, a mere mechanical device. Section 2(d) also excludes any ‘artistic work’ as defined in Section 2(c) of the Copyrights Act.

19. In the present case, the plaintiffs claim copyright in respect of their original drawings. In terms of the judgment in Microfibres (supra), even if the original drawings may be used to industrially produce an article, they would continue to fall within the meaning of ‘artistic work’ under Section 2(c) of the Copyright Act and also continue to enjoy full copyright protection.

20. It is also to be noted that a ‘design’ in respect of a finished product is yet to emerge in the present case. Therefore, no ‘design’ capable of registration under the Designs Act has come out on the basis of the plaintiffs’ drawings. Additionally, the drawings of the plaintiffs relate to fastening systems, which are mere mechanical devices that have functional utility. By no stretch of imagination can it be said that the aforesaid drawings reflect a product, which, in its finished state, would have any visual appeal. Consequently, the aforesaid drawings are not be capable of being registered as a ‘design’ under the Designs Act.

21. Counsel for the defendants has placed reliance on the judgments in Holland Company LP and Anr. v. S. P. Indusries, 2017 SCC OnLine Del 9370 and Jagdamba Impex v. Tristar Products Pvt. Ltd., 2014 SCC Online Del 2872. However, the said judgments do not take into consideration the earlier decision of the Division Bench in Microfibres (supra), which I have relied on to reach the conclusion above. Therefore, need is not felt to delve into the aforesaid judgments.

BANSAL

22. Now, I shall address the issue of whether any copyright for the aforesaid drawings vests with the plaintiffs or if it has been assigned in favour of the Ministry of Railways.

23. The Ministry of Railways laid down the performance criteria for „fastening system for ballastlass track on metro railways‟ vide its communication dated 21st May, 2010. The said communication also provided that metro/MRTS were free to choose their fastening system for ballastlass track complying with the performance criteria. In terms of the aforesaid performance criteria laid down by the Ministry, the plaintiffs obtained approval from the Ministry of Railways.

24. At this stage, a reference may be made to the approval given by the Ministry of Railways to the plaintiffs on 7th October, 2011. The subject matter of the said approval reads as follows: “Double Resilient Base Plate Assembly Fastening systemcorrigendum reg.”

25. The other relevant terms of the said approval are set out below: “…..Accordingly, to operationalize the approval given to the double resilient baseplate assembly system, the following is advised:-

1. A copy of the Performance Certificate of the Dubai Metro dated 28.10.2010, based on which RDSO has considered the performance of the system, is attached herewith as Annexure-1. The Metro Railways/MRTS System should verify the authenticity of the system proposed to be used by them vis-à-vis this Performance Certificate.

2. The drawings and the specification of the fastening system as used in the test assembly, which has been examined and cleared, are enclosed as Annexure-2. The BANSAL Metro Railways/MRTS System should make sure that the system, if used by them, matches completely with the drawing and specifications of the test assembly examined by RDSO. The metro railway/MRTS system are at liberty to carry out any tests for this as considered necessary.

3. Before this system is installed in the track, Metro Railways/MRTS System should satisfy themselves about their chosen fastening system meeting the physical parameters requirements of the Performance Criteria, by conducting fresh tests from an independent laboratory on samples selected by Metro Railway/MRTS system.

4. The clearance is only for the “double resilient base plate assembly fastening system” of M/S Pandrol Limited, UK., Metro Railways/MRTS Systems should verify themselves about the credentials of the prospective suppliers of this system.”

26. In view of the approval granted to the plaintiffs, the products of the plaintiffs became eligible for being tendered for various metro projects. There is nothing in the aforesaid approval letter to suggest that the copyright in respect of the plaintiffs’ drawings was to vest with the Ministry of Railways or that the plaintiffs have waived their copyright in respect of the aforesaid drawings. Defendants have failed to place any documents or material in support of their contention that the copyright in respect of the drawings of the plaintiffs has been waived by the plaintiffs. Even if it is assumed that the copyright has been transferred to the Ministry of Railways, it does not give any right in favour of the defendants to copy the said drawings. Hence, there is no merit in the submission of the defendants that once the drawings of the plaintiffs got approval from the Ministry of Railways and were annexed to the approval letter, they become a part of the BANSAL catalogue of the Ministry and any third party can make a bid based on the aforesaid drawings.

27. Reliance placed on behalf of defendants on Clauses 2 and 4 of the approval letter dated 7th October, 2011 to submit that the tenderers have to completely match the drawings and specifications of the test assembly examined by RDSO, is completely misplaced. The aforesaid clauses are only in relation to approval granted to the plaintiffs. The reference to „prospective suppliers‟ in Clause 4 would only mean authorised suppliers of the said products. This would not, in any manner, give a license to other suppliers to use the copyrighted works of the plaintiffs.

28. Senior counsel on behalf of the defendants has submitted that in terms of the tender document floated by the MPMRCL, for a party to bid for the aforesaid tender, it had to bid in terms of the drawings of the plaintiffs.

29. At this stage, reference may be made to the relevant part of the tender. The scope of the tender is set out below: “„Design, Supply, Installation, Testing and Commissioning of Ballastless Track of Standard Gauge, including Supply of Fastening System for Purple Line from AIIMS to Karond and Red Line from Bhadhbhada Square to Ratnagiri Tiraha, including Elevated and Underground sections along with Ballasted/Ballastless Track in Depot cum Workshop at Subhash Nagar‟ for Bhopal Metro Rail Project.”

30. The other relevant extracts of the tender are as under: “4.2.[1] Requirements for Fastening System for Ballastless Track … iii. Fastening system for Bhopal MRTS Project: The Ballastless track fastening system already approved (vide letter No. CT/EF/Global EOI-2017/Ballastless Track dated 25.10.2019) by RDSO/MOR or installed & commissioned in any MRTS BANSAL project in India and under observation & approval of RDSO/MOR as per clause 1.[2] of Annexure-C[2] of performance criteria of fastening system for ballastless track (attached as Annexure 12 of ITT), can only be proposed under this contract. The proposed ballastless track fastening system shall adequately meet the insulation requirement for stray current of 750V DC Bottom 3rd Rail Traction System as per EN 50122-2 and as per requirement of Tender. The proposed Ballastless Track Fastening System should also have two layer of insulations Le between rail & fastening and between fastening & track plinth/slab. The evacuation of Passenger is proposed as front evacuation in this project as such the walkway gap should be ensured more than 610 mm between rails and detailed drawing shall be submitted along with the tender. iv. Approval Letter of RDSO/MOR: Tenderer to submit approval letter along with approved design/drawing of proposed ballastless track fastening by RDSO/MOR. Tenderer to also submit all annexure and compliance of all observations of RDSO/MOR along with proof. For ballastless track fastening under approval as mentioned above, tenderer to submit all technical details as per performance criteria and also letter of RDSO/MOR for use of said system and CRS sanction letter for opening of the line with that system. vi. Tests reports of the fastening system: In terms of Paragraph 4.[7] and specification given in table 1 of Performance Criteria of ballastless track fastening system contained in Annexure C[2], enclosed at Annexure 12 of ITT Vol. I of this Tender document, the Tenderer should submit test report for the fastening system from reputed independent institute/laboratory. The test reports should be accompanied with the drawing of the fastening system and its components to clearly establish that the fastening system including its components which have been tested and reported upon is exactly same as the fastening system including its components that has been proposed by the Tenderer in this Tender.

BANSAL ix. MoU with Supplier: Submit copy of the MoU entered into between the Tenderer and the Supplier for supply of complete ballastless track fastening system as per tender specification. Single Point Warrantee for the complete ballastless track fastening system and its individual components supplied by Supplier shall be with Tenderer for the defect liability period.”

31. Based on the above, it was contended on behalf of the defendants that once it is the requirement of the MPMRCL itself that the products to be tendered have to be in line with the drawings of the plaintiffs, the plaintiffs cannot contend that the defendants have copied the same. The defendants were obligated to bid for the tender on the basis of the drawings of the plaintiffs.

32. Senior counsel on behalf of the plaintiffs correctly points out that the aforesaid tender of the MPMRCL was not in respect of products to be manufactured specifically in terms of plaintiffs’ drawings. The tender floated by the MPMRCL was in respect of „design, supply, installation, testing and commissioning of ballastless track of standard gauge, including supply of fastening system‟. The same is reiterated in clause 4.2.1(iii) extracted above. The drawings developed and designed by the plaintiffs, as can be seen from the approval letter, were for the DBRAS. Therefore, it cannot be said that the tender was confined to products based on the plaintiffs’ drawings. The tender was for a generic product and the drawings of the plaintiffs were only one of the approved drawings. Therefore, there is no merit in the submission of the defendants that the tender floated was in respect of a specific product to be manufactured as per the drawings of the BANSAL plaintiffs and consequently, the defendants did not have any option but to copy the drawings of the plaintiffs in order to manufacture the said product.

33. In fact, any party who had obtained approvals from the Ministry of Railways could have supplied the products under the aforesaid tender. It is the defendants’ own case that approvals have been received by six companies/entities for the aforesaid products and each one of them was free to bid for the tender. If the defendants failed to prepare their own drawings and get the same approved from the Ministry of Railways, the defendants cannot be permitted to copy the drawings of the plaintiffs.

34. A perusal of paragraphs (ix) of clause 4.2.[1] of the tender document extracted above would show that the tenderer could be a person other than the six companies/entities with the RDSO/Ministry of Railways approvals. Therefore, it was open for the defendants to approach one of the companies/entities whose drawings had been approved or their supplier(s) and obtain a licence/enter into an agreement in respect thereof, to bid for the tender.

35. Clearly, the plaintiffs would have spent considerable time, effort and financial resources and undertaken extensive research and development to create the aforesaid drawings. If the contention of the defendants is accepted, then it would be open for any person to copy the work of another and commercially exploit the efforts of the original creator. This would amount to permitting the defendants to unjustly enrich themselves at the expense of the plaintiffs.

36. I am not persuaded by the submission of the defendants that if suppliers that do not have RDSO/Ministry of Railways approvals are barred from using the drawings of the plaintiffs, a monopoly would be created in BANSAL favour of the plaintiffs. There cannot be any question of a monopoly by the plaintiffs as besides the plaintiffs, five other companies/entities have received approvals from the RDSO/Ministry of Railways.

37. It has vehemently been contended on behalf of the defendants that plaintiffs have not impleaded the Ministry Railways in the present suit and that their presence is necessary to determine the question of whether any copyright vests with the plaintiffs or if it has been assigned in favour of the Ministry of Railways. In my view, the aforesaid submission is completely unsustainable. It is the case of the defendants that plaintiffs have assigned/waived the copyright in favour of the Ministry of Railways or that the copyright vests with the Ministry of Railways. Therefore, the onus is on the defendants to prove that the copyright has been assigned/waived by the plaintiff in favour of the Ministry of Railways or that the same vests with the Ministry of Railways in any case. The stand of the Ministry of Railways, in the present case, would be wholly irrelevant.

38. Furthermore, there is no merit in the submission of the defendants that no copyright subsists in the drawings of the plaintiffs since no registration has been obtained in respect thereof. Registration is not a prerequisite to seeking protection from infringement under the Copyright Act.

39. Senior counsel appearing on behalf of the defendants has not disputed the fact that the drawings of the plaintiffs have been copied in toto by the defendants. However, he justifies the same by submitting that since the aforesaid drawings of the plaintiffs were approved by the Ministry of Railways and tenderers were required to bid in terms of the said approval, the defendants did not have any choice but to copy the drawings of the plaintiffs. Interestingly, on one hand, the defendants admit that they have BANSAL copied the drawings of the plaintiffs, yet in the drawings of the defendants it has been noted that the said drawings have been drawn, checked, reviewed and approved by different personnel of the defendant no.1. Clearly, the attempt of the defendants in doing so was to show the drawing as their own original work.

40. If the defendants actually believed that there was no copyright in the drawings of the plaintiffs and they could freely copy the same, there was no need to put the name of their own personnel as the creators of the aforesaid drawings. The extent of copying by the defendants is not confined just to the drawings of the plaintiffs but goes on to include the unique numbering given to the said drawings by the plaintiffs. Reference in this regard may be made to pages 13 to 38 of the documents of the plaintiff. Further, while copying the aforesaid drawings, the defendants have also copied the mark ‘PANDROL’ of the plaintiffs in some of the drawings, though the defendants submit that it was on account of an inadvertent error.

41. A reference to the Report of the Local Commissioners appointed by the Court reveals that when the Local Commissioners visited the premises of the defendants, the systems/laptops of the personnel of the defendants contained the original drawings of the plaintiffs bearing the trademark of the plaintiffs, ‘PANDROL’. The Report also states that when the Local Commissioners searched for the term ‘PANDROL’ on the two laptops of the defendants, various documents showed up, which included various drawings of the plaintiffs and other ‘PANDROL’ related data. When asked about the existence of such data on their systems, no explanation was forthcoming from the defendants as to how did they obtain such data of the plaintiffs.

BANSAL

42. The discussion above leaves no doubt in my mind that the defendants have dishonestly copied the drawings in respect of which the copyright vests solely with the plaintiffs. Further, this has been done in a brazen manner so as to derive a competitive advantage. In my considered view, this can neither be permitted nor condoned.

43. Accordingly, the present application filed on behalf of the plaintiffs under Order XXXIX Rules 1 and 2 of the CPC is allowed and the order dated 2nd September, 2022 is confirmed till the final adjudication of the suit.

44. Taking into account the conduct of the defendants in having completely copied the drawings of the plaintiffs and seeking to justify the same, the defendants are burdened with costs of Rs.1,00,000/- to be paid to the plaintiffs.

45. Needless to state, any observations made herein are only for the purposes of adjudication of the present application and would have no bearing on the final outcome of the suit.

46. List before the Joint Registrar on 26th April, 2023 for further proceedings. AMIT BANSAL, J MARCH 13, 2023 sr/rt BANSAL