Professional Documents
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Mr.
Mr.
Ms.
Mr.
..... Plaintiffs
Sudhir Chandra, Sr. Adv. with
Pravin Anand, Ms. Binny Kalra,
Tusha Malhotra &
Aditya Gupta, Advs.
Versus
1. The plaintiffs filed a suit to restrain infringement of copyright, breach of confidentiality, damages,
delivery up etc.
2. The plaintiffs claim :
(a) that they are the exclusive owners of the trade secrets and confidential
information along with copyright in the data base, recepies and the other test data
which result in a product I.A. No.10268/2009 in CS(OS) No.599/2007 Page No.1 of
22 "FENCE", which is an insecticidal netting (disease control textiles) used in
agriculture to surround livestock or crops.
(b) that the mosquito nets are made from polyester and polyethylene
and that the production of yarn and manufacture involves a two step
process in which master batch recepies are first formed and later
mixed with pre-determined number of pure PE pallets and extrusion
process of such mixture, through a nozzle of appropriate size, to
produce yarn.
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
(c) that they have developed this product FENCE in September, 2001
and first sale of the product was claimed in mid 2003 and have
developed two other products ZEROFLY (developed in 1996 and sold
for the first time in 2001) and PE BED NET (developed in 2001,
presently not in sale).
3. PLAINTIFFS' CASE AGAINST THE DEFENDANTS
i) that the defendants No.4 and 5 were the employees of plaintiff No.1 being the Sales
Manager and Chief of Production of the plaintiff No.1. These employees left the
employment of the plaintiff No.1 and incorporated a company M/s Intection A/S
(Danish Intection) in Denmark which was declared bankrupt on 30th January, 2006.
They illegally took away the confidential information and trade secrets, proprietary
data, etc. of the plaintiffs with respect to its products including the product FENCE
and formed Danish Intection.
ii) that since the suits were filed against this company in Denmark, the defendants
No.4 to 6 shifted operations to Great Britain and I.A. No.10268/2009 in CS(OS)
No.599/2007 Page No.2 of 22 the companies defendants No.7 to 10 were formed to
further the purpose of Danish Intection and the defendants No.4 and 5.
iii) that a company was also incorporated in France which is defendant No.11 and
suits were also filed inter alia against this company in France.
iv) the plaintiffs claim that defendants No.1 to 3 in India are now carrying out the
operations of manufacture and sale of the disputed products in league with the other
defendants. The Local Commissioners were appointed by the learned Single Judge
but the defendants refused to cooperate with the Local Commissioners.
v) that in the proceedings in U.K., defendants No.5 and 6 were made to disclose the
data of developing and testing of the products through documents, which was
however, subject to a confidentiality agreement, so that only the plaintiffs Danish
lawyer, one expert and one plaintiffs English lawyer were allowed to see such
documents. However, the plaintiffs are not permitted to access such documents
which are relevant for the purposes of the suit before the learned Single Judge. The
reliance is on the orders of the English Court directing disclosure of various classes of
documents.
4. It is claimed by the plaintiffs that defendants No.4, 5 & 6 were/are their
ex-employees and consultants who were instrumental at the stage of development of
the product in question. After termination of the arrangement with the plaintiffs, the
said defendants have in collusion with the other defendants and started to breach the
confidentiality to which they I.A. No.10268/2009 in CS(OS) No.599/2007 Page No.3
of 22 were subject in the matter of manufacture and sale of similar products i.e.
Indian Kanoon - http://indiankanoon.org/doc/125311034/
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
(a) All documents served by the Defendants to the English proceedings on 2nd March
2007 pursuant to the Order of Kitchin J dated 11th January 2007. A copy of the order
dated 11th January 2007 is annexed herewith as Annexure A;
(b) The Defence of the Defendants to the English proceedings dated 4th May 2007
including all schedules thereto designated confidential or otherwise;
(c) The Plaintiffs Confidential Further Information of Particulars of Claim served by
the Plaintiffs on the Defendants in English proceedings on 21st May 2007 pursuant
to the Order of Blackburne J dated 20th April 2007. The order dated 20th April 2007
is annexed herewith as Annexure B.
PRAYER
13. The Plaintiffs pray that this Honble Court may be pleased to pass an order:
(a) Directing the Defendants to the suit to make discovery on oath of the documents
enumerated in paragraph 12 above; and
(b) Allow the Plaintiffs external legal advisers in India to have access to the
documents sought and to discuss the contents of these documents with the Plaintiffs
legal advisers in other jurisdiction; and And this Honble Court may pass any other
order as it deems fit in the facts and circumstances of the case."
6. The said order passed by the learned Single Judge was challenged by the
defendants before the Division Bench in three appeals, being FAO(OS) No.206/2009
by defendant No.1; FAO(OS) No.207/2009 by defendants I.A. No.10268/2009 in
CS(OS) No.599/2007 Page No.5 of 22 No.4,5,6,7,8,10 & 11; and FAO(OS)
No.211/2009 by defendant No.3. These appeals were disposed of on 7th August,
2009 by the Division Bench.
7. The Division Bench has directed to discovery of the documents, vide order dated
7th August, 2009, in the manner provided in sub-para of paragraph 18 of the order.
The same reads as under:"Thus, the documents of the defendants pertaining to the production
of its product and the details with respect thereto including the
manufacturing process, contents and other confidential information
including the copyrights which defendants may have in data base etc.
are no doubt relevant and material to the matters in controversy at
this stage of deciding the injunction application but the most
important aspect is that what if the claim of the defendants is true that
their product is different than that of the plaintiffs and if the plaintiffs
have access to such confidential information then great prejudice and
Indian Kanoon - http://indiankanoon.org/doc/125311034/
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
(ii)
For the
Mr.
Ms.
Ms.
Mr.
For the
Ms.
Ms.
Mr.
Mr.
Dr.
Plaintiffs
Pravin Anand
Binny Kalra
Swathi Sukumar
Sudhir Chandra Agrawal, Senior Counsel
Defendants
Shiva Lakshmi
Udita Singh
Chinmoy Prasad Sharma
C. Aryama Sundaram, Senior Counsel
K.N. Singh, Senior Counsel
11. In the order dated 7th August, 2009, the Division Bench also directed the learned
Single Judge to first devise a procedure to ensure that the information, documents,
Indian Kanoon - http://indiankanoon.org/doc/125311034/
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
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Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
21. The defendants have consented to the regime for the expansion of the UK Confidentiality Club to
Indian counsel and both the plaintiffs and the defendants subsequently signed undertakings
accepting this regime and the terms of the expansion and use of the UK Confidential Documents for
the benefit of these proceedings.
22. As regards the other contentions raised by the defendants, it appears from the record that when
the suit was first time listed before the Court on 2nd April, 2007 along with the interim application,
the Court issued the summons to the defendants and notices in the interim applications. However,
in one of the applications, four Local Commissioners were appointed by the Court to visit the
premises of the defendants to take the I.A. No.10268/2009 in CS(OS) No.599/2007 Page No.15 of
22 samples of master batches and the product being manufactured by the defendants. They were
also directed to make mirror copies of the hard disks of the computers found in the premises of the
defendants. The other assignments were also granted to the Local Commissioners; the same are
mentioned in the order dated 2nd April, 2007.
23. Later on, it was reported by the Local Commissioners in their respective reports and notice of
their reports was taken by the Court in the order dated 15th May, 2007 that the defendants, except
defendant No.2, had acted in an extremely highhanded manner and they appeared to have blatantly
defied the orders of this Court. The Local Commissioners were also physically manhandled and were
not permitted to execute the commission. Considering the fact of the matter, interim order was
issued against the defendants from manufacturing or marketing insecticides- impregnated mosquito
nets till further orders.
24. The allegations of the plaintiffs against the defendants in the subsequent pleadings were that
despite of order of injunction dated 15 th May, 2007 issued against the defendants, the defendants
have continued to market and manufacture the insecticides impregnated-mosquito nets. The
plaintiffs filed contempt petitions being I.A. No.8622/2007 dated 31 st August, 2007, I.A.
No.4544/2008 dated 10th April, 2008 and CCP No.93/2008 dated 29th April, 2008.
25. In the first application being I.A. No.8622/2007 it was urged by the plaintiffs that the
defendants are supplying the Netprotect product to Syngenta S.A. for onward sale. Further, on 18 th
June, 2007 the plaintiffs addressed a letter to Syngenta S.A. to inform them of the pending litigation
between the plaintiffs and the defendants as well as the interim order passed I.A. No.10268/2009 in
CS(OS) No.599/2007 Page No.16 of 22 by the Court. The said company replied to the plaintiffs vide
letter dated 25th July, 2007 which reveals that the defendants are continuing to manufacture and
market insecticide-impregnated nets. It was also mentioned in the application that the defendants
have acted in collusion with each other to defeat the purpose of the order of this Court and the
defendant No.1 has shifted his operations to Shobika Industries.
26. In the second application under Order XXXIX, Rule 2A CPC being I.A. No.4544/2008, the
plaintiffs have referred the marketing presentation released by the defendants in respect of the
impugned product, Netprotect. The particulars of the presentation were given in para-5 of the said
application which read as under:-
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Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
(a) Page 2 of the presentation contains an admission that the marks Intection and
Netprotect are owned by BestNet Europe Ltd., Defendant No.8 herein;
(b) Page 3 of the presentation refers to Netprotect as "Polyethylene with incorporated
deltamethrin";
(c) Page 4 of the presentation shows that the presentation was prepared and
distributed subsequent to the order of injunction, as the presentation refers to events
in December, 2007;
(d) Page 5 of the presentation also indicates that the presentation is subsequent to
the order of injunction, as it refers to large field studies held in July, September and
October, 2007 and that the September 2007 large field study was held in India;
(e) Page 15 of the presentation identifies that the nets are produced in Tamil Nadu,
India, presumably by defendant No.1. The same page also identifies that the
masterbatches are produced in New Delhi, presumably by defendant No.3.
I.A. No.10268/2009 in CS(OS) No.599/2007 Page No.17 of 22
(f) Page 15 also speaks of the production capacity of the defendants throughout 2008. Specific
reference is made to a production capacity of 500,000 nets per month in January, 2008,
notwithstanding the order of injunction, and an expected increase in production capacity in June,
2008 amounting to 750,000 nets per month rising to a production capacity of 1 million nets per
month by December, 2008.
27. The plaintiffs have filed the images of defendants Netprotect product and packaging obtained in
Sudan with a product label identifying its production date as August 2007 which post dates the
order for injunction. The plaintiffs have also filed the copy of an invoice dated 17 th September,
2007 for the supply of 1,81,000 of the defendants Netprotect products to the United Nations
Mission in Sudan under Purchase Order MIS07-1108 and a packing list for the same Purchase Order
MIS07-1108 dated 14th September, 2007 from defendant No.8 herein for 28,300 of the defendants
Netprotect products to the United Nations Mission in Sudan. The label, packaging, invoice and
accompanying packing list expressly identify that the products originate from the defendants and
the packing list dated 14th September, 2007, which was almost four months after the date of the
order for injunction, identifies Tamil Nadu, India as the origin of the goods. The plaintiffs have also
found out that on or about 19 th March, 2008 the defendants signed a distribution contract with
Ostergaard Group, a company based in Denmark, authorizing it to supply the defendants Netprotect
products all across Africa. Defendants No.4, 5 & 6 herein are all Danish citizens.
I.A. No.10268/2009 in CS(OS) No.599/2007 Page No.18 of 22
28. In the third application being CCP No.93/2008, the plaintiffs have produced the copy of the
website of the defendants No.6 and 11 with the following details:Indian Kanoon - http://indiankanoon.org/doc/125311034/
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Mvf 3 Aps & Ors vs Mr. M. Sivasamy And Ors on 31 August, 2012
"Defendants No.10 and 11 herein, Intelligent Insect Control SARL and Intelligent
Insect Control Limited, are headed by Defendant No.6, Mr.Ole Skovmand, and
operate a website www.insectcontrol.net, where they advertise the impugned
product, Netprotect.
The petitioners are filing a printout of the said website, taken on 21st April 2008,
which states "Netprotect represents the latest technological development in the field
of insecticide impregnated mosquito nets". Further on, the website states the
admitted position that Netprotect is a PE Net. In light of this document alone, the
semantic distinction drawn by the Contemnors to avoid the injunction, fails
miserably. The Contemnors interchangeable use of the terms "impregnated" and
"incorporated" in describing their PE product, Netprotect, is evidence that the
distinction is artificial and intended to mislead this Honble Court.
Further evidence of the defendants interchangeable use of the terms "impregnated"
and "incorporated" in describing their PE product, Netprotect, can also be seen from
the fact that defendant No.6 is the co-author of a publication entitled "Netprotect, a
new generation of long lasting impregnated mosquito net" which the defendants
published to coincide with the initial launch of their Netprotect PE product in
Cameroon in November 2005. The petitioners have filed a printout of publications in
2005 by The Centre IRD de Montpellier listing this publication which expressly
identifies defendant No.6 as its co-author."
29. The above facts have been extracted by this Court from the three applications filed by the
plaintiffs against the concerned defendants after passing the interim orders. No doubt, referring
these statements made by the plaintiffs in the said applications does not mean that the plaintiffs do
I.A. No.10268/2009 in CS(OS) No.599/2007 Page No.19 of 22 not have to prove the same at the
time of hearing of the pending applications, but prima-facie, there is sufficient material placed on
record and it has become necessary in order to determine the real issue involved in the matter, that
the prayer made in the application be allowed in view of the guidelines issued by the Division Bench
in the order dated 2 nd August, 2012.
30. Under these circumstances, the present application is allowed. In order to devise a procedure to
ensure the confidentiality of the information, documents, database etc. the following directions are
passed ordering production of the same :
(a) the plaintiffs UK solicitors from the law firm of FIELD FISHER WATERHOUSE
LLP will submit the "UK confidential documents" as defined in paragraph 10(d) of
the present application to the Registrar General of this Court in sealed covers/boxes
within 8 weeks of this order subject to any constraints imposed upon them by the UK
order dated July 02, 2009;
(b) the Registrar General will take the UK confidential documents in sealed
covers/boxes on record;
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