JUDGMENT
A. Kulasekaran, J.
1. O.A. No. 98/2001 has been filed for granting of interim injunction restraining the respondents from manufacturing, selling or offering & advertising for sale the snuff in pouches with similar get up and colour scheme of the applicants pouch and pass off the goods as the goods of the applicants or enable other to pass off pending disposal of the suit and O.A. No. 99/2001 has been filed for granting interim injunction restraining the respondents from committing infringement of the Copyright, which the applicants have in their artistic work contained in the pouches/sachets by distributing, printing or causing to be printed the work or in any manner infringe the applicants work pending disposal of the suit.
2. The case of the applicants is as follows : The applicant has filed the suit for permanent injunction restraining the respondents from (1) infringing the applicants copyright in the Sachet, (2) passing off the respondents goods as those of the applicants using the impugned trade mark, (3) to direct the respondent to render accounts, (4) to direct the respondent to surrender all the cartons, sachets of offending Trade Marks and for other remedies. The affidavits filed in support of the Judge’s Summons are bereft of details, hence proceeded on the averments made in the plaint. The applicants are manufacturing and selling snuff under the brand name ‘D.S.’ For marketing their ‘snuff they pack the snuff in sachet of rectangular shape with a distinctive colour scheme and get-up. The applicant is the first manufacturer who introduced the sale of snuff using sachets. The trade mark DS is impressed on the sachet prominently in yellow letters in red background in a manner bewitching the consuming public, on a sky blue background. The copyright in the get-up alongwith the colour scheme was conceived by the applicant firm in the course of the business in the year March 1993 and it was published since 19.4.93. Using this trademark the applicant has been doing extensive business all over Tamil Nadu and also other parts of South India and their turn over is about Rs. 1.5 crores. The colour scheme and the get up and the totality of the Trade Mark as found in the applicant’s sachet is the subject-matter of registration under the Trade Mark Application No. 831317 filed on December 1999 in Class-34 for snuff, which is pending for registration. The applicant has come to know in the month of January 2000, through the distributors and stockists that the respondent herein is manufacturing and selling snuff packed in similar sachets with similar get-up and colour scheme, infringing the applicant’s copyright and that they are also passing off their goods as the goods of the applicant. The commercial reputation built up by the applicant in all these years is likely to be eroded by the activities of the respondent in using the trademark and the impugned copyright. The applicant sent a notice on 10.3.2000 and the respondent informed them that they would give up the colour scheme and get up but on 25.3.2000 the respondent sent a strange reply to the applicant claiming prior use. Hence the above suit and the applications are filed.
3. The respondent’s case is as follows : The respondent firm was initially started as a sole proprietorship in 1945 in the name and style of M/s. Vani Vilas Snuff Co. by late E.T. Sanagamma Naicker. They were manufacturing and marketing snuff under various brands viz., E.T.S. Madras snuff, Siva Sakthi Special, Siva Sakthi, Sanjeevi-A, Sanjeevi-B, Sri Murugan Special, Sri Murugan (Black), Sri Murugan, Lakshmi and Lakshmi (loose) through tin containers in which labels were affixed containing the respective trademarks. In the tin packing, above said trade names were prominently displayed in the label using yellow, blue, red and green colours in a particular colour scheme and get up. In 1976, the sole proprietorship was converted into partnership firm and in 1982 the firm M/s. Vani Vilas Snuff Company was registered under the Partnership Act. The trade name E.T.S. Sivasakthi label is registered under the Trade & Merchandise Marks Act, spending considerable amount of money in advertisements and for other promotional expenses. The respondent further stated that ‘ETS’ Pattanampodi and other trade names with distinctive colour scheme and get-up acquired considerable reputation all over Tamil Nadu, A.P., Karnataka and Kerala. In 1977 the respondent firm applied for the Registration of its two trade name labels viz., E.T.S., Sivasakthi Pattanampodi and Sri Murugan Pattanampodi printed in yellow background alongwith blue squares and in the center Parvathi and Sivan were printed in a circle, under the Trade & Merchandise Marks Act. Further labels were printed using blue, red, black and green colours. Subsequently the same was registered under the Act in Class-34 for snuff and the registered on 3.11.80 in numbers 325854 and 325855 respectively and the same are periodically renewed and valid up to the year 2005. In 1993, the respondent firm in addition to tin containers, decided to launch marketing the snuff packed in pouches.
4. Hence the trade mark ‘ETS’ which is printed in bold yellow letter in red and dark blue background in both the sides of the pouches to attract the attention of the consuming public. The entire artistic work and colour scheme and get-up in the pouches is conceived and developed by the respondent. The respondent denied that the applicant introduced the sale of snuff using sachets. One M/s. N.G Arya Snuff & Cigar Co., introduced initially the sale of snuff in sachets. Following them the respondent is the second entrant in the field to introduce the sale of snuff in pouches. The respondent further alleged that the applicant is a recent entrant in the filed of snuff and in fact they have copied the respondent work consciously and has introduced with slight variation. Even the rear side of the pouches of the applicant was copied from the respondent pouches. In the year 1993, the respondent introduced the snuff packed in pouches and they used the colour scheme and get up printing that trade mark ‘ETS’ in yellow letters in dark blue background in a manner attracting the consuming public on a parrot green background. After two months, the respondent developed the colour scheme and get up printing trade mark ‘ETS’ in yellow letters in red background on a blue background and has been using continuously and extensively from 1993 onwards. Hence they prayed for dismissal of the applications.
The point for consideration in this case is, whether the applicant is entitled to the interim reliefs sought for or not ?
The main dispute between the parties is relating to colour combination and get up of sachets. The case of the plaintiff is that they have been using their trade mark DS in yellow letters in the red back ground on a blue back ground. The case of the respondent is that they have also been using their trade mark ETS in yellow letters in a red background on a blue back ground from 1993 onwards. The applicant has claimed that they submitted necessary application in the month of December 1999 in Class-34 for registration of the colour scheme and the get up and the totality of the trade mark which is pending for registration, but not produced any valid document.
The respondent has claimed that they registered the labels, which were printed using blue, red, black and green colours under Trade and Merchandise Marks Act, 1958 in Registration Nos. 325854 and 325855 of their products as early as 1980 but produced only the Xerox copies before this court.
6. The applicant filed Document No. 3 Proforma Price List 1/93 filed before the Central Excise Authority to show that they have been selling their product in polythene pouches and Document No. 4 which is Xerox copy dated 14.7.97 to show that the colour combination and get up are being used from the said date onwards. The respondent has filed Xerox proforma price list dated 20.9.93 to show that they have been selling their products in the pouches and the 2nd page of the said document to show the colour combination of yellow, red and blue. Both the parties proforma and enclosures are in Xerox copies, hence this court could not ascertain the colour combination of the trademark relating to the said periods. The respondent has affixed in their rejoinder-dated 2.8.2001, the applicant’s pouch which contains yellow letters in the red background on a brown background. Mr. Alagirisamy learned senior counsel argued that the applicant never used the present colour combination on earlier occasion but they have copied the colour combination of the respondent.
7. The parties herein have though chosen to file a number of affidavits, counter affidavits, reply and rejoinders, not placed any valid documents to show whose colour combination and get up is earlier in point of time. It is impossible to decide from the records placed before this Court to accept the case of the applicant. Of course, it may be possible to the parties to prove their case in the trial. Learned counsel appearing for both the sides have relied on a catena of decisions, which are not applicable to the facts of the case.
8. In order to exercise the discretionary power to grant interim relief it is absolutely necessary to find out (1) Whether the applicant has made out a prima facie case (2) Whether there is balance of convenience in their favour and (3). In case of the relief of injunction sought for is denied, whether it would case irreparable loss to the applicant.
9. In this case, the applicant has not made out any prima facie case for the grant of any interim remedy since no valid documents are placed before this Court to prove that their colour combination and get up is earlier in point of time and the same is copied by the respondent. No balance of convenience is in their favour. Both the parties have been doing the business of selling snuff in sachets. On comparison, I found that the colour combination of the applicant and the respondent are identical except few dis-similarities. Hence, it is just and necessary to direct the respondent to submit the statement of accounts periodically into this court till the disposal of the suit.
10. In the result both the applications O.A. Nos. 98 & 99 of 2001 are dismissed with the observation made in Para No. 9. No costs.