Western Smart Bins (J.V.) & Ors. v. Sotkon SP SLU

1. Appellants (original defendants) through this appeal seek setting aside of the impugned order dated 31st October, 2022 passed by the learned Single Judge in an application under Order XXXIX rule 2A of Code of Civil Procedure, 1908 (hereinafter referred to as the “CPC”) read with Section(s) 11 and 12 of The Contempt of Court Act, 1971 (hereinafter referred to as the “CCA”) filed by the respondent (original plaintiff) against the appellant nos.[2] and 3 and also (i) Mehul Parasmal Panani (ii) Ms. Manjula Parasmal Jain, (iii) Mr. Bharat Aggarwal, (iv) Mr. Shreyansh Aggarwal, (v) Ms. Seema Rajput and (vi) Mr. Bharat Bhushan Uppal (hereinafter collectively referred to as the “alleged contemnors”). The learned Single Judge in view of the earlier ad interim ex parte order of injunction dated 5th October, 2021, has been given one last opportunity to the said alleged contemnors to file their affidavit and photographs subject to their depositing a sum of Rs. Two Crores with the Registrar General of this Court within one month.

2. Succinctly put, the respondent instituted a suit for permanent injunction, infringement of patent and copyright, damages/ rendition of accounts, delivery up etc. against the appellants before the learned Single Judge for restraining them from infringing its registered Patent No. IN 329620 and from using photographs and literature from its brochures and technical specifications of the products that amounted to infringement of its copyrights, amongst other reliefs. When the matter was listed before the learned Single Judge on 05th October, 2021 for the first time, finding merit in the matter of the respondent and as it was able to make put a prima facie case with balance of convenience in its favour, vide an order of even date, the learned Single Judge restrained the said appellants’, their proprietors, partners etc. by an ex parte injunction from infringing the registered patent IN 329620 of the respondent and further from using the photographs, illustrations from the respondent’s brochure and the technical specifications of the products that amounted to infringement of respondent’s copyright.

3. Upon being served, the appellants first filed their detailed written statement challenging the validity of the registered patent IN 329620 of the respondent and then an application under Order XXXIX Rule 4 of the CPC for vacation of the ad interim ex parte order of injunction dated 5th October, 2021. As apprised by the learned Senior Counsel for the appellants, the pleadings in the said application under Order XXXIX Rule 4 of the CPC of the appellants are complete and the said application is pending disposal.

4. In the meanwhile, finding that the appellants were continuing with their activities in violation of the ad interim ex parte order of injunction dated 5th October, 2021, the respondent filed an application under Order XXXIX rule 2A of CPC read with Section(s) 11 and 12 of CCA (hereinafter referred to as the “contempt application”) against the appellant nos.[2] and 3 along with alleged contemnors and not the appellant no.1.

5. Upon completion of the pleadings in the said contempt application and after hearing all the parties therein, the learned Single Judge specifically held as under: - “17. The submissions being made today that though the bid documents have these photographs, the supplies made were of different bins, does not appeal to this Court. In response to a tender, once the bids are submitted to a Government Entity, it would not be permissible, barring exceptional situations, for the said entity to accept any other products than the once which have been put up in the bid by the bidder. Nothing has been shown to the Court that the bins supplied were different. A perusal of the No- Deviation Certificate submitted by the Defendants also clearly shows that there cannot be any deviation between what was offered and what was supplied by the Plaintiff. Thus, the submission that the bins are different is not tenable at this stage.

18. The Defendants have admittedly received a large amount of money from the Corporation. If the Defendant was of the opinion that the bins which were to be supplied to the Corporation were not infringing the patent of the Plaintiff, considering the manner in which the order dated 5th October, 2021 is worded, the Defendants ought to have moved an application seeking clarification before this Court for supplying bins to the Corporation, which they admitted did not do. Clearly, the Defendants are being clever by half today, by seeking to argue that the bins which have been actually supplied, do not infringe the Plaintiff’s patent.

19. The interim order granted by this Court dated 5th October, 2022 clearly extracts the bid documents and photographs used by the Defendants and it is abundantly clear that the supplies being made by the Defendants to the Corporation would stand injuncted in view of the interim order. There was no ambiguity at all in the said order. Thus, at this stage subject to anything further that the Defendants may produce, this Court is of the view that the Defendants are prima facie guilty of contempt. …”

6. It is in view thereof and despite thereto that the learned Single Judge has given one last opportunity to file their affidavit and photographs subject to their depositing a sum of Rs. Two Crores with the Registrar General of this Court within one month and nothing more.

7. Aggrieved thereby, out of the alleged contemnors only the appellant nos.[2] and 3 have preferred the present appeal and none of the other alleged contemnors impleaded as parties in the said contempt application by the respondent before the learned Single Judge have challenged it. It is noteworthy that even though the appellants have challenged the impugned order, they are yet to deposit the said sum of Rs. Two Crores with the Registrar General of this Court despite the period of one month granted to the appellant nos. 2 and 3 and the other contemnors being long over.

8. This Court has heard the learned senior counsel for appellants at considerable length and has also expended sufficient time in going through all the documents on record.

9. Prior to dwelling into the merits of the contentions raised by the appellants, it is noteworthy that firstly, though the appellant no.1 has preferred an appeal against the impugned judgement, however, the respondent never initiated a contempt proceeding against it and it was not a party to the proceedings before the learned Single Judge. Therefore, being a rank outsider the present appeal under Order XLIII rule 1(r) of appellant no.1 is not maintainable before this Court and secondly, though the appellants have questioned the validity of the registered patent IN 329620 of the respondent in its pleadings, however, during the course of arguments addressed, the learned Senior Counsel for the appellants has repeatedly submitted (to which we had repeatedly sought clarification) that the appellants are not challenging the validity of the patent and as their product is different from that of the respondent therefore, there is no requirement to do so. Besides that, the appellants have pleaded/ raised various grounds pertaining to the correctness of the findings recorded in the earlier ex parte order of injunction dated 05th October, 2021; and questioned the correctness of the requirement in a contempt application in a patent suit; and the working system of the appellants being different from that of the respondent; and amount of Rs. Two Crores being on the higher side, which due to the less profit in the previous financial year 2021-22, the appellants are unable to deposit.

10. Coming into the merits of the issue, a perusal of the impugned order reveals that the same has been passed taking into account the past conduct of the appellant nos.[2] and 3 and also the alleged contemnors and that the said contempt application of the respondent against them is still pending before the learned Single Judge and there has been no final adjudication therein yet. In view thereof, since the said application is yet to be decided by the learned Single Judge and as there is no finding arrived therein, this Court is of the view that the present appeal should not be entertained at this stage. More so, whence a detailed impugned order has been passed after considering the earlier ad interim ex parte order of injunction dated 5th

11. In view thereof, the appellants are precluded from questioning the validity of the registered patent IN 329620 of the respondent when there is already an injunction against them and against which they have already filed an application under Order XXXIX rule 4 of the CPC before the learned Single Judge and which has yet to be adjudicated. This Court finds no fault in the impugned order passed by the learned Single Judge in view of the validly subsisting ad interim ex parte order of injunction dated 05th

12. It seems that the appellants, by virtue of present appeal are clandestinely wanting to challenge the earlier ad interim ex parte order of injunction dated 05th October, 2021 under the garb of challenging the impugned judgement dated 31st October, 2022. The same is not permissible as admittedly, the appellants even after a lapse of more than fifteen months have not preferred any appeal against the said order till date. The appellants are estopped from reading the earlier ad interim ex parte order of injunction dated 05th October, 2021 in conjunction with the impugned order passed later under challenge in the present appeal before this Court.

13. According to us, vide the impugned order the learned Single Judge has favorably given one last opportunity to the appellants nos. 2 and 3 who have filed the present appeal along with other alleged contemnors to file their affidavit and photographs subject to their depositing a sum of Rs. Two Crores with the Registrar General of this Court. The said money, not being with the respondent, is thus in the safe custody of this Court. Moreover, the fate of the said sum of Rs. Two Crores to be deposited with the Registrar General of this Court is yet to be decided.