UDAY UMESH LALIT,J. - (1.) Leave granted.
(2.) Commercial Trade Mark Suit No.8 of 2017 was filed by the respondent herein ('plaintiff', for short) in the Court of District Judge, Surat contending inter alia that it had validly subsisting Copyright in Advisor software both in Israel as well as in USA; that it had secured registration in USA in the 6th version (or version 6.0) of its Advisor software bearing registration No.TX8-252-522; that as per International Copyright Order, 1999 this right also extended to India, being a Member Country under the Berne Copyright Union in like manner as if it was published in India and that the petitioners ('defendants', for short) herein had infringed the copyright of the Plaintiff over Advisor software. According to the plaintiff said software, using a three dimensional representation helps in analyzing how best a raw precious stone can be cut and polished so that best quality diamonds and precious stones could finally emerge and thus helps in deriving maximum advantage. The plaintiff prayed inter alia for permanent injunction against the defendants in respect of ... "Advisor software, for which copyright subsists under common law and also version 6.0 whereof, the code for which also includes programming from previous versions, has been registered in the USA copyright No.TX8-252-522". The plaintiff also filed an application for interim injunction (Exh.-5) and prayed for following relief:- "(i) An order of ex-parte ad interim injunction be passed in favour of the Plaintiff and against the defendants, their affiliates, subsidiaries, related parties, officers, directors, representatives, agents, distributors, assigns, nominees and customers restraining them from directly or indirectly, jointly or severally, using distributing, selling, offering for sale any inclusion scanning services that infringe the Plaintiff's copyright as well as any future machine/device that incorporates the copyrighted software of the Plaintiff and infringes the copyright of the Plaintiff in its Advisor software, for which copyright subsists under common law and also version 6.0 whereof, the code for which also includes programming from previous versions, has been registered in the United States of America as Copyright No.TX8-252-522; And be made absolute till final decision of the suit."
(3.) The matter was contested and the trial court by its order dated 22.09.2017 dismissed the application for interim injunction. In an appeal preferred by the plaintiff, the High Court by its order dated 21.12.2017 set aside the order passed by the trial court and remitted the matter back to the trial court for fresh consideration. It was observed by the High Court as under:- "[6.1] In any case as observed hereinabove whether the source code or the object code of the plaintiff's software and the defendants' software are the same or not or the defendants have copied the source code or the object code of the plaintiff's software or not would go to the root of the matter. The source code or the object code of the plaintiff's and defendants' software are required to be compared by calling upon both of them to provide their respective source code and object code which can be sent to any impartial and independent expert for comparison. Therefore, we are of the opinion that without further entering into the merits of the case and /or expressing anything on merits, the matter is required to be remanded to the learned Judge, Commercial Court for deciding the application Exh.5 afresh and after calling upon both, the plaintiff and the defendants to provide their respective source code and object code to the Court so that the same can be sent to any impartial and independent expert for comparison. On the aforesaid ground alone the impugned order passed by the learned Judge, Commercial Court deserves to be quashed and set aside and the matter is required to be remanded to the learned Judge, Commercial Court for deciding the application Exh.5 afresh and after undertaking the exercise as stated hereinabove. [7.0] In view of the above and for the reasons stated above, present Appeal from Order succeeds. Impugned order passed below Exh.5 application by the learned Judge, Commercial Court, Vadodara in Commercial Trade Mark Suit No.8/2017 is hereby quashed and set aside and the matter is remanded to the learned Judge, Commercial Court, Vadodara for deciding the application Exh.5 afresh in accordance with law and on its own merits, however while deciding the application Exh.5, the learned Judge, Commercial Court to call upon the plaintiff and the defendants to provide their respective source code and object code of their respective software to the Court and the Court may send the same to some impartial and independent expert for comparison with the source code and object code of the plaintiff. The aforesaid exercise shall be completed within a period of 4 weeks from the date of receipt of the present order and/or the receipt of the writ of the present order. Present Appeal from Order is allowed to the aforesaid extent. No costs." The aforesaid order was challenged in this Court by the defendants but this Court did not find any ground to interfere and the Special Leave Petition was dismissed on 16.03.2018.;