S. Ravindra Bhat. J:

1. This common order will dispose of two applications, under Order 11, Rule 14, Civil Procedure, ("CPC") seeking discovery of documents from the defendants.

2. The plaintiffs contend to be in the business of developing, producing and selling mosquito nets made from polyester (PE) and polyethylene (PE). They claim to use insecticides to either impregnate the nets (PES) or incorporate into the net material (PE). They allude to three products, i.e. "FENCE", which is an insecticidal netting used in agriculture to surround livestock or crops; "Zerofly" a family of insecticidal tarpaulin products predominantly using PE; and PE Bed Net, an insecticidal mosquito bed net, made of PE. The plaintiffs have detailed the dates of start of development of the products; Fence was started in September, 2001; Zerofly, in 1996 and PE Bed Net, in September 2001. The date of first sale of each product was Fence, Mid 2003, on limited experimental basis; Zerofly, in 2001 and PE Bed Net, a pipeline product, not presently in sale. The plaintiffs contend that production of yarn and manufacture involves a two step process, in which "masterbatch recipes" are first formed, and later mixed with a predetermined number with pure PE pallets and extrusion process of such mixture, through a nozzle of appropriate size, to produce yarn.

3. The plaintiffs claim to making painstaking efforts to protect the unique knowledge and skills, and ensure their confidentiality. Such skills, they claim were built up through thousands of tests. Thus, Masterbatch recipes and product recipes used for creation of plaintiffs products constitute their trade secrets, maintained confidential, at all times. It is claimed that the facilities involved in creation of batches are generally informed of the product recipes; manufacturing facilities were engaged in strict terms of confidentiality; disclosure to plaintiffs employees, is restricted to only those involved in particular projects, and duties of confidentiality imposed on employees.

4. The defendant No. 1, say the plaintiffs, manufacture PE nets for Defendant Nos. 7-11, which are English companies, The first defendant also operates through proprietorship concerns. Defendant No. 2 is a marketing and distribution agent of Defendant No. 8, for PE and other nets that violate the plaintiffs trade secrets and confidential information. Defendant No. 3, is believed to be the manufacturer of masterbatches for defendant Nos. 7 to 11, for PE and other nets that violate the plaintiffs trade secrets and confidential information. The fourth defendant was a former regional sales manager of the first plaintiff, directly responsible for sale of the latters products. She was employed in November 2000, promoted as Regional Manager and became regionally responsible for sales in Europe and South America. She cancelled her employment contracted in June 2004 and resigned immediately. After the event, a Danish Limited Liability Company, i.e. Intection A/s ("Danish Intection") was formed, and later converted into Intection APS, on 3rd August, 2004; the fourth defendant was its managing director. This company was declared bankrupt on 30lh January 2006.

5. The plaintiffs allege planning by Defendant 4 with Defendant Nos. 5 and 6 to start a competing business, The defendant No. 5 was also employed on 1st November 2000 and was former Chief of Production at Plaintiff No. 1; he cancelled his employment contract on 18th May 2004 and resigned on 31sl August 2004. He is alleged to have copied a large proportion of material from the plaintiff No. 1 including its confidential information and trade secrets. Similarly, the sixth defendant was engaged as product development consultant with plaintiff No. 1; the said defendant is said to be in co-operation with the plaintiff No. 1 since December 1999. He is said to have entered into an oral contract with Plaintiff No. 1 to assist in its product development of disease control textiles on exclusive basis; it is alleged that as long as the consultancy subsisted, he would not work for anyone else. It is claimed that an express term of the contract was confidentiality about the information relating to recipes and performance and properties of such products and their prototypes. The said defendant, from 2002 rendered his consultancy through a French company, Intelligent Insect Control, SAS, later converted into SARL, i.e. the eleventh defendant. The plaintiff avers to the sixth defendant cancelling his cooperation with the plaintiff, in December 2005, and later entering into a written agreement in January, 2005 for limited co-operation, and yet again involving himself in a competing business, i.e. Danish Intection. The agreement, it is alleged, was terminated in April, 2005; the plaintiffs allude to the said sixth defendant being involved in the development of the product Zerofly and Permanet until November 2005.

6. According to the plaintiffs, the Defendant Nos. 4 to 6 are under a statutory duty, under Danish law, not to disclose confidential information obtained during employment. It is also alleged that they were bound by express and implied obligations of confidentiality. The defendant Nos. 7 to 10 were founded in or around October - November 2005 when various proceedings had been initiated against Danish Intection, by the plaintiffs, in Denmark. The plaintiffs say they have reasons to believe that Danish Intection had transferred a number of its activities to Defendant Nos. 7 to 10; Defendant Nos. 4 and 5 are currently working as consultants to the Defendant No. 8. The plaintiffs allege that Defendant Nos. 4 and 5 copied sensitive and confidential employment, while in its employment, with a view to help Danish Intection, which they intended to join. It is also alleged that they contacted the plaintiffs suppliers in India, to obtain information regarding net producers for the purpose of manufacturing process.

7. The plaintiffs allude to the history of litigation against the fifth defendant, Danish Intection, as well as the ninth defendant, in Danish courts seeking retrieval of unlawfully copied material and files. It is submitted that eight of those cases were closed. The plaintiffs allege copyright infringement in the databases, recipes and other test data, which belongs to it by virtue of Section 17(C) of the Copyright Act 1957. They contend having invested substantial resources into developing databases and recipes etc in relation to the manufacture of insecticide incorporated mosquito nets. They allege that unauthorised storage and reproduction of the copyright work and use of such databases recipes and test data by the defendants is contrary to law. According to the plaintiffs and defendants have breached confidentiality and unlawfully made use of the confidential material. Besides, the plaintiffs allege dishonest activities of defendants, particularly the fifth defendant who copied vast quantity of documents from the plaintiffs which were found when search and seizure orders were instituted in March 2005, in Denmark, The documents included confidential information which is subject of the present proceedings. The plaintiffs say that defendant No. 5 has used aliases in his dealings, and has travelled several times in India regularly. The underhand behaviour of defendants four, five and six is demonstrated by their use of different e-mail identities while setting up Danish Intection when they forwarded documents from their normal business e-mail addresses.

8. The plaintiffs claim that various tests commissioned by them establish that Indian samples are very close and similar to their "Fence". The plaintiffs allege that the defendants set up companies in the United Kingdom, being Defendant Nos. 7-10 with their common registered office, at Surrey. The shareholding pattern of these companies is also mentioned by the plaintiffs. The plaintiffs mention about initiation of proceedings against a Defendant Nos. 4, 5, 7, 8, 9 and 10 which are currently pending adjudication. They mention about an order for disclosure by the court on 11 January 2007; the defendants disclosed certain documents which are confidential. The plaintiffs also submit about their having filed a suit against sixth defendant 10th and 11th defendants in France which are pending adjudication it is claimed that such and seizure orders were issued by the French court. According to the plaintiffs, the defendants with a view to avoid detection in other jurisdictions up manufacturing facilities through defendant Nos. 1 & 3 in India; they have also operated through their direct agent the second defendant to distribute Netproduct. The plaintiffs discovered through investigations the defendants the 4-10 commissioned the first defendant and his proprietorship concerns to manufacture the product, using the plaintiffs trade secrets and confidential information.

9. It is claimed that the plaintiffs procured the Indian samples, tested by an agency RAPRA, that establishes close similarity between the chemical compositions and concentrations of the plaintiffs and defendants products. Similar nexus between the second and eighth defendant is alleged; the third defendant is believed to be producing masterbatches for manufacture of Netprotect. On the basis of all these allegations, several reliefs have been sought. A decree for permanent injunction restraining the defendants or any of the employees etc from infringing the plaintiffs copyright is claimed; likewise a permanent injunction restraining the defendants from manufacturing any product using confidential information of the plaintiffs; injunction restraining the defendants from engaging in development, production or testing products of the kind that the subject matter of the suit; a consequential injunction to restrain the defendants from authorising, causing procuring or assisting any person or firm from doing any of the acts alleged; direction for delivery up and forfeiture to the plaintiffs of all documents and materials in the power and possession of the defendants; a decree for accounts and a decree for damages to the extent of Rs. One crore are sought.

10. In IA 8624/07, the plaintiffs rely on an order of 2 April 2007 whereby local Commissioners were directed to visit the defendants various premises; they were empowered to preserve evidence in the matter, the loss of which could have prejudicially affected the plaintiffs. The commissioners were permitted to take samples of masterbatches and the products being manufactured by the defendants. They were also authorised to make mirror copies of the hard disks of computers installed at the premises of the defendants. The plaintiffs allude to obstructions by the first and third defendants, who are net producers and masterbatches producers for the defendants. It is claimed that this amounts to confirmation is conduct. The plaintiffs also refer to the order of the court dated 15 to May 2007 restraining the defendants from manufacturing or marketing insecticides impregnated mosquito nets. The plaintiffs allege to being appalled to find, on 25 July 2007, that the eighth defendant was wilfully and knowingly violating the injunction order. The plaintiff also alleges that the first defendant had shifted its operations to Shobika Industries, one of its other proprietorship concerns. The plaintiffs refer to initiation of contempt proceedings against the defendants. In these circumstances they seek disclosure of three kinds of documents such as those disclosing inter se between the defendants, pertaining to the subject matter of the suit; documents pertaining to the manufacture and sale of the impugned NetProtect product; and the documents relating to export import of the impugned product whether in the defendants own names or to any other person or entity including the "ICON LIFE", brands sold by Syngenta, in its letter dated 25 July 2007.

11. In IA 8625/07, the plaintiffs rely on an order of the High Court of Justice, Chancery Division UK by which they have disclosed documents that are confidential in nature. The documents were disclosed to those defendants who were willing to provide undertakings of confidentiality, such as defendant Nos. 5 and 6. The plaintiffs claim that defendant in the said action also were made to disclose development and testing of the product through documents, on 2 March 2007. It is alleged that under the terms of a confidentiality regime imposed by the English High Court as to July 2007, in these documents are only allowed to be seen by the plaintiffs English law, as well as one of the plaintiffs Danish lawyers and an expert instructed by the plaintiff English lawyers. However plaintiff nor its legal representatives in India are permitted access to such documents lodged by the defendants. It is submitted that the documents referred to technical analysis at the request of the plaintiffs English lawyers to compare the recipes from the plaintiff Fence database with the defendants product recipes, The plaintiffs allege that the nature of information furnished by the defendants before the English court and the submissions made by them reveal their knowledge about the processes and products over which the plaintiffs have exclusive rights. Yet the plaintiffs are unable to access the information effectively for prosecution in the Indian courts on account of the confidentiality undertakings furnished on their behalf in the English courts.

12. The plaintiffs have placed reliance on the order of the English court directing disclosure, of various classes of documents. The plaintiffs also referred to an order of the English court declining to strike off the action. The judge, it is contended held that the defendant has not overcome the burden of establishing that the action could be struck out and that the material was not the sort of evidence to support such an order. It was submitted that the judge significantly held that mere reference to multiple proceedings in multiple jurisdictions, was an irrelevant factor because where businesses are transferred from one corporate entity to another, it was reasonable to sue the new corporate entity in its country of incorporation and to sue the individuals who owned and controlled the corporate entities; the court thus felt that to hold otherwise would be a charter for defendants to use a trail of companies to avoid judgment.

13. Defendants 6, 10 and 11 argue that the product "Netprotect" is different from the plaintiffs FENCE product. They deny using the plaintiffs confidential information; they also allege that the issue of copyright infringement cannot be gone into in Indian Courts. The sixth defendant, they aver, started the development of Netprotect with the advice of Ciba, given to him; Ciba is the leading producer of additives which are to be added to PE products to protect them from degradation by Ultraviolet (UV) light, The said sixth defendant is a scientist; he works for various clients and institutions and is developer of both Fence and Netprotect products which are different; he was also external consultant to the plaintiffs helping development of their products; he started development of `Fence product for which he took, as a starting point, recommendations of Ciba. He says that the plaintiffs claim that they first came upon knowledge or that it was their trade secret is false, misleading and untrue.

14. The said defendants allege fundamental differences between Netprotect and Fence; the latter is an agricultural product, meant to be used as an agricultural fence to kill pests, whereas Netprotect is to be used as a mosquito net. it is submitted that the patent application of the plaintiff itself discloses that the sixth defendant is inventor, The said defendant used Cibas recommendation, and a different route to develop Netprotect, which was done in 18 months. The said defendant denies having copied any confidential information, of the plaintiffs or having worked for them on exclusive basis.

15. Defendants 5 and 8s stand is that the fifth defendant never intended to, alongwith fourth defendant, set up business by misappropriating plaintiffs confidential information or base their new product on the plaintiffs product. The defendants Netprotect is different from the Plaintiffs Fence. These defendants also deny having misappropriated or copied the plaintiffs confidential information.

16. It is stated that the plaintiffs have filed this suit on the basis of conjectures and surmises and that they have not been able to make out a prima facie claim against the defendant. The plaintiffs had earlier initiated proceedings before the High Court of Justice, Chancery Division, London, U.K. on the same subject matter as of the present suit. The claimant and the defendants have both signed confidentiality agreements in the proceedings before the U.K. Courts. In compliance to order dated 11.02.2007, the defendant served his confidential documents to the plaintiffs attorney. The fifth defendant denies that plaintiffs were not been permitted to access the defendants confidential documents. It contends that pursuant to order dated 30.10.2007, plaintiffs representatives Mr. Finn Kjaergaard, Chairman of the plaintiffs and Mr. Sicco Roorda, Chief Production Officer of the plaintiffs, signed and agreed to the Confidentiality Undertakings dated 20.11.2007 to inspect the defendants Confidential Documents at the plaintiffs U.K. legal advisors office. It is averred that the Plaintiffs prayer before the English High Court, to allow its legal representative in India, free access to defendants confidential documents was rejected.

17. It is contended that the technical analysis report referred to by the plaintiffs was never brought on record of the English proceedings, which is clear from orders dated 25.10.2007 and 30.10.2007 in case no. HC06C04408 (U.K. proceedings). On the other hand, an analysis report of the. defendants product i.e. Netprotect and the plaintiffs confidential information relating to `Fence formulations by Prof. Gary Stevens, submitted before the U.K. court, supports its (defendants) stand that their PE product is originally developed and differs from the plaintiffs product; this report has been relied upon by the Judge in order dated 25.10.2007 of the English Proceedings.

18. The fifth defendant claims to be manufacturing under licence exclusively for the defendant No. 8, who took the entire produce. The defendant denies any business relationship with the defendants No. 4 to 11 or any sort of dealings with the third defendant, who is not its Masterbatch producer. It is stated that the plaintiffs have nowhere pointed out their exact grievance and have failed to substantiate their claim of copyright infringement, as it is unclear as to what has been infringed. It is stated that contents of their petition does not indicate any special or confidential knowledge, bound by the confidentiality undertakings, from the proceedings of U.K. Courts. The chart referred to apparently does not contain any confidential information form English Proceedings, rather such information is freely available to interested persons in the trade. It is submitted that the defendant is equally bound by the confidentiality undertakings regime of the U.K. Courts. The documents sought by the plaintiffs have already been submitted to them by virtue of orders of the U.K. Court proceedings and the same are in possession of either the plaintiffs or their solicitors.

19. The first defendant denies allegations of misappropriation or unauthorized use of plaintiffs confidential information consisting of recipes and database, he also denies any kind of business relationship with the plaintiffs or that the plaintiffs ever entrusted him with any trade secrets including any `literary work. Infringement of the plaintiffs copyright is denied. He claims that no obstruction was intended to be caused to the Local Commissioners in performing the inspection; it is stated that due to a communication gap between his workers and the Commissioners, the whole situation was misconstrued. It is claimed that there is difference between the products of the two parties, in as much as the plaintiffs manufactures and markets `insecticides impregnated mosquito nets which is dip dyed in the insecticide and made in polyester (PES), whereas the defendant manufactures and supplies `long lasting insecticides nets under the name of `Netprotect in which insecticide is incorporated in the polyethylene (PE) nets at the time of extrusion itself, giving it long lasting quality as the evaporation of the insecticide is reduced enormously and it is more effective. Violation of the ex-parte ad interim injunction order dated 15.05.7007 is denied. The existence of Shobhika Industries, another proprietorship concern of the first defendant, is admitted and it is stated that it was involved in the business of manufacturing nets etc. other than `insecticides impregnated mosquito nets and that the defendant has never tried to hide the existence of the other firm.

20. The defendant also denies knowledge of proceedings pending in the United Kingdom or other countries. It is stated that the defendant first gained knowledge of litigation between plaintiffs and defendants No. 4 to 11 in the United Kingdom and other countries from the papers filed by the plaintiffs in the present case. The defendant claims to not being privy to, nor having any knowledge of any confidential information as is alleged. It is further claimed that the defendants have not violated any norms of the `Confidentiality Regime of English Court and that the differences between the two products, as brought forth in the application under Order 39 Rule 4 C.P.C. The defendant submits that the information emanates from common knowledge of trade, claims and sales pitch made by product developers/manufacturers made in various seminars, conferences, etc. and from various reports/claims in journals and trade sources, rather than the records of the `English proceedings. It is further stated that the present litigation by the plaintiffs is a means to hound out existing competition for their future product, which is still `in pipeline as also the suit itself is inappropriate for this jurisdiction.

21. The third defendant reiterates most of the statements of the first defendant; he also inter olio states that he never misappropriated or attempted to acquire the plaintiffs confidential information including `literary work either jointly with the other defendants or individually. The defendant denies any sort of business relation with the plaintiffs or even with the other defendants. The defendant or his agents did not intend to cause any obstruction in the execution of the commission by the Local Commissioner. The defendant denies knowledge of the foreign litigation apart from what is stated by the plaintiffs in the proceedings of this case and as is revealed from the documents forming a part of record of this litigation. The plaintiffs case is denied as baseless; there are, according to the third defendant, characteristic differences between the two products.

22. Mr. T.R. Andhyarujina, learned senior counsel submitted that this Court had appointed three commissioners to visit the premises of defendants 1 to 3, to execute the instructions directed. He relied upon the report of such commissioners and contended that the said defendants did not cooperate and even indulged in threatening behaviour, which is contumacious and undermines the authority of the Court. Learned counsel relied upon certain e-mail communications between the defendants and submitted that the plaintiffs confidential information was being used. According to the order of the Danish Court dated 11.10.2006 prohibited intection from entering into contracts for manufacturing or marketing insecticides impregnated mosquito nets. It is submitted that the plaintiff has produced the recipes although, under sealed cover.

23. Learned counsel relied upon the various averments in the suit to say that the defendants acted in breach of confidence and without the plaintiffs consent, unlawfully used proprietary information and developed products. It is contended that the reports produced and relied upon clearly demonstrated that the defendants were ready for testing by January 2005 when the 1st defendant had left the plaintiffs employment. It is contended that the net product sample sold by the 1st defendant is closely similar as evidenced by the reports placed on the record. The similarities, it is contended were too close for coincidence. Learned senior counsel contended that the Court, when considering an application for discovery only has to satisfy itself that the documents which are in the possession or power of the other party are relevant for the purpose of throwing light in the matter in controversy, it is submitted that the Courts have even ruled that admissibility of a document is not a relevant factor while deciding the application under Order 11 Rules 12 and 14 of CPC. Learned counsel relied upon the decision of the Supreme Court reported as M.L. Sethi v. R.P. Kopur, AIR 1972 SC 2379 [LQ/SC/1972/327] .

24. It is submitted that the plaintiffs comparative disadvantage in regard to defendants position and various proceedings is also a relevant factor while deciding the present applications. Counsel contended that the plaintiffs had disclosed their documents but their counsel were constrained by orders of the Court in England to refrain from discussing or disclosing anything concerning the defendants documents, in accordance with the procedure formulated by the English Court in that regard. The plaintiffs have also filed their documents but are unable to take up the matter further. Learned counsel contended that the English Court was alive to this situation when it rejected the defendants application for summary dismissal of the case; counsel relied on observation in the judgment saying that the materials presented before the Court showed broad similarities between the recipes of the plaintiffs and the defendants. It was also submitted that there is no fetter placed upon this Court exercising its power under Order 11 Rules 12 and 14 CPC to direct the respondents/defendants to disclose information which has direct and relevant bearing on the controversies involved in the suit.

25. Mr. C.A. Sundaram, learned senior counsel for defendants 4 to 11 (except defendant No.9) submitted that the first two defendants are only mixing batches. According to the counsel the Denmark proceedings were drawn only against the 9th defendant; he pointed out that the said proceedings culminated in an ex parte order which was clearly not on the merits. Learned counsel submitted that this Court should not overlook the fact that in neither of the proceedings before the English Court or French Court, the plaintiffs have been able to secure the injunction orders. This discloses prima facie that their claim for exclusivity or confidentiality in information set up in the entire suit is without foundation.

26. Learned counsel next submitted that 6th defendant was a consultant and independent professional engaged by the plaintiffs to develop the product. Learned counsel relied upon the averments in the plaint and submitted that neither in the pleadings nor in the documents filed in support by the plaintiffs, did they ever claim that 6lh defendant was their employee. Counsel contended that in the absence of any written contract or written assignment deed, the plaintiffs claim for owning the copyright in whatever was produced by the 6th defendant, an independent contractor, is unfounded and untenable in law. It was denied that defendants 4 and 5 are in conspiracy with each other. Counsel further claims that alleged confidential information is in fact the product of the 6Ih defendant. All allegations of theft and copying of such documents are entirely without any basis since 6th defendant has copyright. Learned counsel submitted that on an entire reading of the suit, the plaintiffs cannot show that the information belongs to them; therefore, there was no question of their claiming or owning copyright.

27. Learned counsel relied upon the judgment of the Supreme Court reported as Silver Jubilee Tailoring House v. Chief Inspector of Shops, 1974 (3) 5CC 498 and Zee Entertainment Enterprises Limited v. Gojendra Singh 2008 (36) PTC 53 [Bom] [LQ/BomHC/2007/2110] , in support of the submission that an independent contractor is never regarded as an employee, under contract of service. Counsel relied upon the observations of the Supreme Court that unless dominant control over the manner of performance of the work is established, the mere circumstance that a contract for service is entered into does not imply that the contractor stands in the position of an employee or a servant.

28. Learned counsel submitted that by relying upon the judgment of the High Court of Andhra Pradesh in Rajesh Bhatia v. Porimala, 2006 (3) AID 415, that the Courts power to direct production for inspection of documents is discretionary and that no such order for production of documents for inspection is made unless the Court is of opinion that it is necessary either for disposal fairly of the causes or the matter, It was submitted that when the important averments relating to copyright ownership as well as the so called confidentiality of information, in inhering with the plaintiffs were in serious dispute, and they were unable to reveal or substantiate the soundness of such claim, the Court should not make an order for discovery, it would in effect undermine and negate the undertaking furnished on behalf of the plaintiffs in the English Court.

29. The power of a civil court to order discovery is contained in Section 30 of the Civil Procedure Code, and Order XI Rules 12-14. The same read as follows:

"30. Power to order discovery and the like.

Subject to such conditions and limitations as may be prescribed, the Court may, at any time, either of its own motion or on the application of any party, -

(a) make such orders as may be necessary or reasonable in all matters relating to the delivery and answering of interrogatories, the admission of documents and facts, and the discovery, inspection, production, impounding and return of documents or other material objects producible as evidence;

(b) issue summonses to persons whose attendance is required either to give evidence or to produce documents or such other objects as aforesaid;

(c) order any fact to be proved by affidavit.

xxxxxxx xxxxxx xxxxxxxx xxxxxxxx

Order XI DISCOVERY AND INSPECTION

xxxxxxx xxxxxx xxxxxxxx xxxxxxxx

12. Application for discovery of documents

Any party may, without filing any affidavit, apply to the Court for an order directing any other party to any suit to make discovery on oath of the documents which ore or have been in his possession or power, relating to any matter in question therein. On the hearing of such application the Court may either refuse or adjourn the same, if satisfied that such discovery is not necessary, or not necessary at that stage of the suit, or make such order, either generally or limited to certain classes of documents, as may, in its discretion be thought fit:

Provided that discovery shall not be ordered when and so far as the Court shall be of opinion that it is not necessary either for disposing fairly of the suit or for saving costs.

13. Affidavit of documents

The affidavit to be mode by a party against whom such order as is mentioned in the last preceding rule has been made, shall specify which (if any) of the documents therein mentioned he objects to produce, and it shall be in Form No. 5 in Appendix C, with such variations as circumstances may require.

14. Production of documents

It shall be lawful for the Court, at any time during the pendency of any suit, to order the production by any party thereto, upon oath of such of the documents in his possession or power, relating to any matter in question in such suit, as the Court shall think right; and the Court may deal with such documents, when produced, in such manner as shall appear just."

30. In M.L Sethis case (supra) the Supreme Court held that:

"Generally speaking, a party is entitled to inspection of all documents which do not themselves constitute exclusively the other partys evidence of his case or title. If a party wants inspection of documents in the possession of the opposition party, he cannot inspect them unless the other party produces them. The party wanting inspection must, therefore, call upon the opposite party to produce the document. And how can a party do this unless he knows what documents ore in the possession or power of the opposite party In other words, unless the party seeking discovery knows what are the documents in the possession or custody of the opposite party which would throw light upon the question in controversy, how is it possible for him to ask for discovery of specific documents. ."

The Court, speaking about Order 11, Rule 12 CPC, held that:

"When the Court makes on order for discovery under the rule, the opposite party is bound to make an affidavit of documents and if he fails to do so, he will be subject to the penalties specified in Rule 21 of Order 11. An affidavit of documents shall set forth alt the documents, which are, or have been in his possession or power relating to the matter in question in the proceedings. And as to the documents which are not, but have been in his possession or power, he must state what has become of them and in whose possession they ore, in order that the opposite party may be enabled to get production from the persons who have possession of them (see Form No. 5 in Appendix C of the Civil Procedure Code). After he has disclosed the documents by the affidavit, he may be required to produce for inspection such of the documents as he is in possession of and as are relevant".

31. The Court also held that the documents sought to be discovered need not be admissible in evidence in the enquiry of the proceedings and it is sufficient that the documents would be relevant for the purpose of throwing light on the matter in controversy. In a subsequent decision, dealing with an election dispute, Sosanagoudo v. S.B. Amarkhed, AIR 1992 SC 1163 [LQ/SC/1992/291] , the position vis-a-vis production of documents on discovery and inspection was explained, in the following terms:

"The Court, therefore, is clearly empowered and it shall be lawful for it to order the production, by any party to the suit, such documents in his possession or power relate to any matter in question in the suit provided the Court shall think right that the production of the documents are necessary to decide the matter in question. The Court also has been given power to deal with the documents when produced in such manner as shall appear just. Therefore, the power to order production of documents is coupled with discretion to examine the expediency, justness and the relevancy of the documents to the matter in question. These are relevant considerations, which the Court shall have to advert to and weigh before deciding to summoning the documents in possession of the party to the election petition..."

32. In the suit, the plaintiffs complain that the Defendant Nos. 4 and 5 were working for them; it is alleged that the Defendant No. 6, who had entered into contract, in conjunction with the other defendants, also misused confidential information, which resulted, inter alia, in the development and marketing of the product "Netprotect", which is identical to its "Fence". The plaintiff relies on two reports, and an order for discovery, made by the English High Court. The position of Defendant Nos. 4 to 11, however, is that the plaintiffs claim for copyright and exclusivity of confidential information is unfounded. These, as well as the first defendant, deny any copying of the plaintiffs information or its misuse. They also submit that the English and French courts have not made any interim orders.

33. It is an uncontroverted fact that the English court directed discovery of the documents, by the parties; some of the defendants, notably Defendant Nos. 4-6 were parties; they did disclose the documents. The plaintiff also disclosed its documents; this was subject to undertaking of its counsel. The defendants say that the attempt to have the undertaking relieved was unsuccessful, as the court refused access to the documents, to the plaintiffs. The defendants also contest the plaintiffs assertion of copyright in the product, or that they infringed their exclusive rights to the confidential information.

34. Now, while considering an application under Order 11, Rule 12, CPC, the Supreme Court has ruled that relevance, justness and expediency to product documents are germane considerations which weigh with courts, while making orders. It was also held that admissibility of documents is not a relevant consideration while deciding whether to direct discovery. In the decision relied on by the defendants, i.e. Rajesh Bhotias case (supra) it was held that:

"In Halsburys Laws of England, fourth edition, Volume 13 in para 1, the nature and extent of discovery has been considered thus:

The term "discovery" in this title is used to describe the process by which the parties to civil cause or matter are enabled to obtain, within certain defined limits, full information of the existence and the content of all relevant documents relating to the matters in question between them. The process of the discovery of documents operates generally in three successive stages, namely (1) the disclosure, in writing by one party to the other of all The documents which he has or has had in his possession, custody or power relating to matter in question in proceeding: (2)_the inspection of the documents disclosed, other than those for which privilege from or other objection to production is properly claimed or raised: and (3) the production of the documents disclosed either for inspection by the opposite party or to the court.

The function of the discovery of documents is the provide the parties with the relevant documentary material before the trial so as to assist them in appraising the strength or weakness of their respective cases and thus to provide the basis for the fair disposal of the proceedings before of at the trial. Each party is thereby enabled to use before the trial or to adduce in evidence at the trial relevant documentary material to documentary material to support or rebut the case made by or against him to eliminate surprise at or before the trial relating to documentary evidence and to reduce the costs of the litigation. [Emphasis is mine]

At page 33 in para 37 it has been further dealt as under.

The obligation to disclose the existence of relevant documents is now coextensive with the obligation to produce documents for inspection. The fact that a document is privileged or otherwise protected from inspection is no reason for not disclosing its existence.

In determining whether a document should be disclosed by a party two, tests should be applied: (1) whether it is relevant; (2) whether it is or was in the possession, custody or power of the party or his agent: and in any case when the order directing disclosure has limited discovery or relates to particular documents only the terms of that order must be applied. [Emphasis is mine]

The court later summarized the law in the following manner:

"40. From the above discussion it appears that the rules of procedure envisaged under Order 11 of the Code and the rules of evidence contained in Chapter 10 of the operate in different spheres. They may appear to be analogous in certain areas, but the purpose or object behind these provisions would clearly tell us that the former rules are meant to shorten the litigation at the initial stage before the trial and the latter rules of evidence are meant to discover the truth at the stage of trial or giving evidence. Not only that discovery of facts or discovery of documents can be allowed only with the leave of the court, discovery by means of Interrogatories can be objected on the ground that It Is scandalous, Irrelevant, mala fide and on the ground of privilege. The answer to the interrogatory shall be by means of an affidavit. Similarly, discovery of documents can be Objected on the ground of legal or professional privilege; that they may tend to criminate a party or expose him to forfeiture; that they are protected by public policy; that they are not in the sole possession of the party; that they solely relate to the case of the party; that they are in the possession of the party as an agent or a representative of another; and that they disclose evidence of partys own case. Again the discovery of documents shall be made upon oath, Non-compliance with the order of discovery of documents entails if it is by the plaintiff the dismissal of his suit and if it is by the defendant the striking down of his defence, whereas, under the rules of evidence a notice is envisaged to be given to the adversary by the party requiring the production of the documents or if it is a case of a witness summons to be issued to produce a document into the Court and upon the production of the document either by the party or by the witness a party who has called for the document is bound to give it as evidence when the opposite party requires him to do so. And if the party who is required to produce a document fails to produce a document upon receiving notice, he cannot use the document as evidence without the consent of the other party or order of the Court ot a later stage and it is open to the party to lead secondary evidence of the document required and for the Court to draw adverse inference as per the provisions contained in illustration (g) to Section 114 of the. No penal consequences are envisaged under the provisions of the. The document sought to be discovered need not be admissible in evidence in the enquiry of the proceedings and it is sufficient that the document would be relevant for the purpose of throwing light on the matter in controversy, unlike in the case where the documents are sought to be introduced in evidence not only they shall be relevant but also they shall be admissible in evidence and shall be proved. The above distinguishing factors clearly show the difference between the discovery of fact or documents and production of documents under the provisions of the."

35. The preceding discussion would show that apart from addressing the merits of the suit, the defendants are not claiming any overbearing prejudice; they have also not put up privilege of any kind, in answer to the applications for discovery. The object of discovery is to shorten litigation, as held by the Supreme Court. The court, while considering the application, for such purpose, is not expected to rule on the relative strength or merits of the case; indeed, it cannot even rule on the admissibility of the documents for which discovery is claimed. It should be satisfied that the application further the ends of justice, and trial; it should throw light in the proceedings. Whether the plaintiffs can eventually establish that their confidential information and secrets were or are utilized by the defendants, or that their copyrights were violated, are aspects which can be gone into at the stage of trial. If this court starts prejudging on those aspects, it would be ruling on the application for discovery, on considerations which are not germane.

36. In view of the above discussion, the plaintiffs applications are to be allowed. Accordingly, discovery, of the documents, referred to in Paras 11 (b) and (c) in IA 8624/07 and Para 12 (a) and (b) of IA 8625/2007 is hereby directed, by the defendants, within six weeks. The said documents shall be filed under sealed cover, in this court. The two applications, IA 8624/07 and 1A 8625/2007, are allowed in these terms. No costs.

CS (05)599/2007

List the suit and other pending applications before the appropriate Bench according to roster subject to orders of Honble the Chief Justice for directions on 17th April, 2009.