Full Judgment Text
$~OS-12
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 09.03.2021
+ CS(COMM) 84/2019 & IA. 9890/2020
KENT RO SYSTEMS LTD. & ANR. ..... Plaintiffs
Through Ms.H.Rajeshwari, Mr.Vikramjeet and
Mr.Talwaj A.J., Advs.
versus
JAIDEEP KISHNANI & ORS. ..... Defendants
Through Mr.Neeraj Grover, Ms.Meenakshi
Ogra and Ms.Suvangana Agarwal,
Advs.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (Oral)
IA. No.9890/2020
1. This application is filed by the defendants under Order 11 Rule 1 (10)
of the Code of Civil Procedure seeking leave of the court to file additional
documents.
2. It is stated that the present suit was filed in the District Court alleging
infringement of plaintiffs’ design. In view of various grounds and defences
taken by the defendants/applicants in the written statement and in view of
Section 22 (4) of the Designs Act, 2000, the suit was transferred to this court
on 11.02.2019.
3. It is pleaded that under the scheme of the Designs Act, a design
registration can be obtained for new or original features of shape,
configuration, pattern, ornament or composition of lines or colours applied
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to any article. It is stated that in the plaint the plaintiffs have nowhere stated
what exactly is the novelty claimed in respect of design Nos.262661 &
252225. All that is stated is “The product using design No.262661 being
octagonal in shape is unique”.
4. It is pleaded in the written statement that plaintiff's design
Nos.262661 & 252225 are not novel and have been published prior to in the
industry.
5. Hence, it is pleaded that via the present application the
defendants/applicants wish to place on record various documents exhibiting
prior publications in reference to impugned design Nos.262661 & 252225.
It is further stated that recently the counsel for defendants stumbled upon the
judgment of this Court in M/s Crocs Inc. USA vs. Bata India Ltd & Ors.,
(2019) 78 PTC 1 , where he came across the existence of "WayBack
Machine", which is an internet archive i.e. a non-profit library of millions of
free books, movies, software, etc. This website provides screen shots of
web pages which could be searched for on the web archive. The search was
started for prior publication of water purifiers with ‘novel’ features, as has
been claimed by the plaintiffs in respect of two registered design
Nos.262661 & 252225 and the defendant came across various web pages
advertising water purifiers, prior to the date of registration of plaintiff's
designs. It is pleaded that it has become imperative to place these documents
on record which have now been discovered on the web to strengthen its
objection of prior publication already stated in the written statement. It is
pleaded that these documents are necessary to show that the ‘novel’ features
claimed by the plaintiffs existed in public domain and the same were
available to the public prior to the date of registration of the plaintiffs’ said
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designs. Hence, the present application.
6. In the reply, the plaintiffs have stated that the plea taken by the
defendant that he was unaware of the website “WayBack Machine” is not a
ground in law to sustain the present application. The said website has been
in existence since 1995. It is urged that after filing of the written statement
in October, 2018, the learned counsel for the defendants has changed and it
is clear that the filing of the additional documents is nothing but an
afterthought and a device of indirect improvement of the written statement,
and there is no subsequent development. It is stated that a vague plea was
raised by the defendants in the written statement that the plaintiffs’ designs
were pre-published and covered by prior art but no specific prior art was
produced. The plea remained unsubstantiated. The matter has now reached
the stage of evidence and the defendants have realised that their case is
weak. Through the present application the defendants are merely trying to
improve their case by introducing documents which were always available
to them. It is further stated that the defendants have sought to file 13
additional documents out of which 7 do not relate to the website WayBack
Machine. Hence, the documents filed by the defendants should not be
considered at all.
7. I have heard learned counsel for the parties.
8. Learned counsel for the defendants/applicants has urged that the
documents proposed to be taken on record relate to issue No.IV framed on
10.02.2020. The applicants seek to place on record copies of three
applications before the concerned registration office. Two applications are
of third parties and balance comprises of internet records. Reliance is placed
on judgment of the Supreme Court in the case of N. Balakrishnan v. M.
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Krishnamurthy AIR 1998 SC 3222 and judgment of a Co-ordinate Bench of
this court in the case of Hassad Food Company Q.S.C. & Ors. v. Bank of
India & Ors. , 2019 SCC OnLine Del 10647).
9. Learned counsel for the plaintiffs has vehemently opposed the present
application. She relies upon the written statement filed by the defendants to
state that other than a bald statement that there is no novelty in the said
designs-in-question, there is no elaboration in the written statement. By
allowing the present documents to be introduced after pleadings are over and
evidence has commenced would tantamount to depriving the plaintiffs of an
opportunity to comment on the said documents in the pleadings. The pleas
as already elaborated were mainly bald pleas, and are now sought to be
elaborated without giving an opportunity to the plaintiffs to respond to the
same. She relies upon a judgment of a Co-ordinate Bench of this court in the
case of Zee Entertainment Enterprises Ltd. v. Saregama India Ltd., CS
(COMM) 1674/2016 dated 11.09.2019 and a judgment of a Division Bench
of this court in the case of Santosh Malik (since deceased) Through Lrs. vs.
Maharaj Krishan & Anr. 2012 (127) DRJ 582.
10. O rder 11 Rule 1 Sub - Rules 7 and 10 CPC as applicable for
Commercial Division of the High Courts or Commercial Courts read as
follows:
“ ORDER XI
Disclosure, Discovery and Inspection of Documents in Suits
Before the Commercial Division of a High Court or a
Commercial Court
1. Disclosure and discovery of documents-
xxx
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(7) The defendant shall file a list of all documents and
photocopies of all documents, in its power, possession, control
or custody, pertaining to the suit, along with the written
statement or with its counter-claim if any, including—
(a) the documents referred to and relied on by the
defendant in the written statement;
(b) the documents relating to any matter in question in
the proceeding in the power, possession, control or
custody of the defendant, irrespective of whether the
same is in support of or adverse to the defendant's
defence;
(c) nothing in this rule shall apply to documents produced
by the defendants and relevant only—
(i) for the cross-examination of the plaintiff's
witnesses,
(ii) in answer to any case setup by the plaintiff
subsequent to the filing of the plaint, or
(iii) handed over to a witness merely to refresh his
memory.
xxx
(10) Save and except for sub-rule (7)(c)(iii), defendant shall not
be allowed to rely on documents, which were in the defendant's
power, possession, control or custody and not disclosed along
with the written statement or counter-claim, save and except by
leave of court and such leave shall be granted only upon the
defendant establishing reasonable cause for non-disclosure
along with the written statement or counter-claim;”
11. Hence, a defendant shall not be allowed to rely on documents which
are in the defendant’s power, possession, control or custody and not
disclosed along with the written statement except by leave of the court
which is to be granted only to the defendants on establishing a reasonable
cause for non-disclosure along with the written statement or counter claim.
12. A Co-ordinate Bench of this court in Zee Entertainment Enterprises
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Ltd. vs. Saregama India Ltd. (supra) held as follows:
“1.The plaintiff in this commercial suit, after framing of issues
on 9th October, 2017 and after commencement of the recording
of evidence, seeks leave to file additional documents.
xxxxx
13.The changes brought about by the Commercial Courts Act,
2015 in respect of filing of documents having already been
discussed in Nitin Gupta and Societe Des Produits Nestle S.A.
supra, need to reiterate the same is not felt. Suffice it is to state
that:
(a) while Order VII Rule 14 of the CPC, applicable to
ordinary suits, requires a plaintiff, when suing upon a
document or relying upon documents in his possession or
power in support of his claim, to enter such documents in
a list and to produce it in the Court when the plaint is
presented by him, Order XI Rules 1 to 3 of the CPC as
applicable to commercial suits requires a plaintiff to file a
list of all documents and photocopies of all documents in
its power, possession, control or custody, pertaining to
the suit, along with the plaint including documents
relating to any matter in question in the proceedings, in
the power, possession, control or custody of the plaintiff,
as on the date of filing the plaint, irrespective of whether
the same is in support of or adverse to the plaintiff’s case
and to, in the said list also specify whether the documents
in the power, possession, control or custody of the
plaintiff are originals, office copies or photocopies and
the list to also set out in brief, details of parties to each
document, mode of execution, issuance or receipt and
line of custody of each document; the plaint is also
required to contain a declaration on oath from the
plaintiff that all documents in the power, possession,
control or custody of the plaintiff, pertaining to the facts
and circumstances of the proceedings initiated by him
have been disclosed and copies thereof annexed with the
plaint, and that the plaintiff does not have any other
documents in its power, possession, control or custody;
(b) while Order VII Rule 14(3) of the CPC pertaining to
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ordinary suits provides that a document which ought to
be produced in Court by the plaintiff when the plaint is
presented, or to be entered in the list to be added or
annexed to the plaint, but is not produced or entered
accordingly, such document, without the leave of the
Court, shall not be received in evidence on behalf of the
plaintiff at the hearing of the suit,
Order XI Rule 1(5) pertaining to commercial suits, bars
the Court from allowing the plaintiff to rely on
documents which were in the plaintiff’s power,
possession, control or custody and not disclosed along
with the plaint, save and except by leave of the Court and
which leave shall be granted only upon the plaintiff
establishing requisite cause for non-disclosure along with
the plaint.
It would thus be seen that the requirement for filing of
documents along with the plaint is much more detailed,
precise and specific in a commercial suit than in an
ordinary suit. The plaintiff in an ordinary suit is required
to produce along with the plaint only such documents on
which he is suing or on which he intends to rely in
support of his claim. On the contrary, in a commercial
suit, the plaintiff along with the plaint is required to file
all documents pertaining to the suit irrespective of,
whether the same are in support of or adverse to the
claim of the plaintiff. The list of documents required to
be filed by a plaintiff in an ordinary suit is only required
to have an entry of the document. On the contrary, the list
of documents required to be filed by a plaintiff in a
commercial suit is required to specify, whether the
documents are originals or office copies or photocopies
and also contain details of parties to each document,
mode of execution and line of custody of each document.
The plaint in a commercial suit is also required to contain
a declaration on oath from the plaintiff with respect to the
documents, as aforesaid. There is no such requirement in
the ordinary suit.
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14.What emerges is, that the plaintiff in a commercial suit,
before instituting the suit, is required to go through all the
documents in his power, possession, control or custody
pertaining to the subject matter of the suit, whether in support of
or adverse to his case and make a declaration with respect
thereto on oath. The requirement in a commercial suit of
declaration on oath qua the documents is not an empty
formality. The form of list of documents and the
particulars/specifications to be contained therein, coupled with
declaration on oath with respect thereto, in a commercial suit,
requires a plaintiff to, at the time of institution of suit, rather
than stating only the title and date of the document, which alone
is required to be filled in the list of documents in an ordinary
suit, peruse each document and only then fill the
particulars/specifications required to be filled in the list of
documents. The requirement of such contents being declared to
be correct on oath, places a more heavy onus on the plaintiff.
15. Preparation of such a list of documents as aforesaid, leaves
no scope of “inadvertent errors ‟ as is pleaded by the plaintiff.”
13. Clearly, the procedure for filing documents in a commercial suit
requires meticulous compliance by the defendants. The defendant has to file
a detailed list of all the documents in its power, possession, control or
custody pertaining to the suit along with the written statement. The written
statement shall also contain a declaration on oath made by the deponent that
all the documents in the power, possession, control or custody of the
defendant pertaining to the facts and circumstance of the proceedings
initiated by the plaintiff has been disclosed and copies thereon annexed with
the written statement and the defendant does not have in its power,
possession, control or custody any other document. Leave can only be
granted to the defendant to file new documents after filing of the written
statement on the defendant establishing reasonable cause for non-disclosure
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along with the written statement.
14. There is merit in the plea of the learned counsel for the plaintiff that
the written statement filed by the defendants does not contain any details as
to why the design of the plaintiffs-in-question 262661 is not novel. A bald
plea is taken in para 7(c) of the written statement that the design is not novel
and has been prior published in the industry. Further details are not given.
By the present application the defendant seek to introduce documents to
show alleged prior publication much after filing of the written statement and
framing of issues. Further by the time this application was filed, the plaintiff
had filed its evidence by way of affidavit. Great prejudice would be caused
to the plaintiff if the present application is allowed and the fresh evidence is
permitted to be taken on record. Further the proceedings would get
needlessly delayed.
15. I may look at the judgment relied upon by learned counsel for the
defendants. In Hassad Food Company Q.S.C. & Ors. v. Bank of India &
Ors. (supra), the Co-ordinate Bench of this court held as follows:
“13. Perusal of Order XI as noted above reveals that the
plaintiff is bound to file all documents in its power, possession,
control or custody with the plaint and in case of urgent filing of
a suit if some additional documents are to be filed under sub-
rule (1) of Rule 1 of Order XI, the plaintiff may seek leave of
the Court to rely on additional documents which additional
documents are required to be filed within 30 days of filing of
the suit. Under sub-rule (5) of Rule 1 of Order XI, the plaintiff
shall not be allowed to rely on documents which were in the
plaintiff’s power, possession, control or custody and not
disclosed along with the plaint or within the extended period
save and except by leave of the Court which leave can be
granted only if the plaintiff establishes reasonable cause for
non-disclosure along with the plaint. The language used in the
sub-rule (5) is that the plaintiff is required to show “a
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reasonable cause” and not a “sufficient cause” as is ordinarily
provided in other provisions.
14. While dealing with Order XIII Rule 2 CPC wherein the
words used are: “unless good cause is shown”, the Supreme
Court in the decision reported as (2002) 1 SCC 535 Madanlal
vs. Shyamlal, noted the distinction between “good cause” and
“sufficient cause” and held that “good cause” requires a lower
degree of proof as compared to “sufficient cause” and thus the
power under Order XIII Rule 2 CPC should be exercised
liberally. Sub Rule (5) of Rule 1 of Order XI of the Commercial
Courts Act, 2015 uses the phrase “reasonable cause” which
would require even a lower degree of proof as compared to
“good cause”.
16. In my opinion, in the facts of this case, it cannot be said that the
defendants have even shown reasonable cause for the belated filing of these
documents at this stage. The above judgment does not assist the case of the
defendant.
17. There is no merit in the present application. The same is dismissed.
JAYANT NATH, J.
MARCH 9, 2021/v
Corrected and released
on 08.04.2021.
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By:NIRMLA TIWARI
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