“QUIA TIMET" ACTION UNDER TRADE MARKS

Abstract

A quia timet action is a legal remedy in trademark law used to prevent apprehended infringement before it happens, requiring proof of imminent and substantial danger. Courts evaluate factors such as the likelihood of confusion, intent to exploit the plaintiff’s goodwill, potential for tangible damage and the balance of hardship between parties when considering injunctive relief in such cases. The plaintiff ‘s apprehension of harm forms the basis of the action.

Introduction

The quia timet action is an equitable relief sought under dire circumstances with a view to prevent any infringement from taking place, lest the owner be left with no relief upon such infringement. The apprehension of the plaintiff is a cause of action. Upon a successful demonstration of the apprehension, an injunction should be granted. The relief of quia timet grants the holder of the rights to protect their intellectual property rights even before an actual violation occurs. For instance, if a third party undertakes preparatory acts such as the manufacture, promotion or sale of products or services that would infringe upon another’s intellectual property rights, the court intervenes. The very actions of intent by such a third party to infringe another’s rights provide sufficient grounds for judicial protection. Once the court is satisfied that there exists likelihood of infringement, it is within its power to restrain the third party from committing the violation which was anticipated.

Tests for granting injunctive relief in quia timet action

The Supreme Court in Kuldip Singh v. Subhash Chander Jain dealt with the scope of quia timet action and observed as follows:

A quia timet action is a bill in equity. It is an action preventive in nature and a specie of precautionary justice intended to prevent apprehended wrong or anticipated mischief and not to undo a wrong or mischief when it has already been done. In such an action the court, if convinced, may interfere by appointment of receiver or by directing security to be furnished or by issuing an injunction or any other remedial process. In Fletcher v. Bealey, Mr Justice Pearson explained the law as to actions quia timet as follows: There are at least two necessary ingredients for a quia timet action. There must, if no actual damage is proved, be proof of imminent danger, and there must also be proof that the apprehended damage will, if it comes, be very substantial. I should almost say it must be proved that it will be irreparable, because, if the danger is not proved to be so imminent that no one can doubt that, if the remedy is delayed the damage will be suffered, I think it must be shown that, if the damage does occur at any time, it will come in such a way and under such circumstances that it will be impossible for the plaintiff to protect himself against it if relief is denied to him in a quia timet action.

The tests for granting injunctive relief in quia timet action are:

(1) Whether it is likely to cause confusion or to deceive the purchasers as to source or origin of the trade mark or the goods to be sold in future under the said mark irrespective of the fact whether goods intended to be sold are competitive goods or not; (ii) Whether the intention to use of infringed trade mark is to trade or cash upon the reputation and goodwill of the plaintiff earned over the years through extensive advertisement and huge expenses; (iii) Whether there is likelihood of real or tangible damage or injury to the plaintiff or reasonable probability if the same would take place. In other words whether use of the trade mark by the defendant is likely to be associated with the plaintiff's trade mark or business; (iii) Whether the hardship suffered by the plaintiff would be greater than that of the defendants if injunction is not granted against the defendants.

In Mars Inc. v. Kumar Krishna Mukerjee the alleged infringer had not used the infringed trade mark in relation to any goods in respect of which the plaintiff’s trade mark is registered nor has the defendant committed offence of passing off. The defendants have merely adopted the trade mark of the plaintiff as a part of corporate name and trading style and was a company on paper only. It had neither started nor carried out any business, The question was whether incorporation of word “MARS” by the defend-ant company with the objective to launch food items and confectionery goods or adopting the word “MARS” in its corporate name has rendered the defendant liable for quia timet action or not.

The court found that “to expect the aggrieved party to wait and watch for the opening of business or manufacturing or sale or goods under the apprehended infringement of trade mark is too much.”

It was held that the plaintiff’s apprehension of real and tangible possibility that the defendants may start manufacturing in the food sector is neither imaginary nor misplaced and found injunction by quia timet action appropriate.

In Direct Line Group Ltd. V. Direct Line Estate Agency Ltd., the plain-tiffs were members of a group of companies of which Direct Line Insurance plc was the best known. They brought an action for passing off and trade mark infringement against two individuals who had formed three companies, Direct Line Estate Agency Ltd., Direct Line Will’s Ltd. And Direct Line Estate Ltd. The plaintiffs sought interlocutory relief and alleged that the individual defendants had a track record of taking or being associated with the taking of famous name trade marks belonging to third parties for the purpose of siphoning off the goodwill belonging to other traders or for the purpose of offering the marks back to their original proprietors for profit.

As against this, the defendants took the plea that they have not traded as yet though one of them was trading as Direct Line Estates Ltd. Injunctive relief was granted by observing that -

There will be no great hardship suffered by the defendants if an injunction is granted against them. On the other hand, it seems to me that the illegitimate use by the defendants of a name which will be associated with the plaintiff’s business might well cause significant damage to the plaintiffs pending if such a trial takes place.

Marks & Spencer Plc. V. One in a Million Ltd. was a case of domain names. The defendants registered a large number of internet domain names including names comprising the names or trade marks of well known enter prises without their consent. None of the sites were active, though available for sale. The plaintiff sought injunction on the ground that registration of such domain names constituted actual or threatened passing off and trade mark infringement. In view of the threat of passing off and trade mark infringement and the likelihood of confusion arising from the infringement of the mark, the court granted injunction by way of quia timet action.

Conclusion

A quia timet action allows trademark holders to seek a preventive injunction before actual infringement occurs, serving as a form of precautionary justice to protect reputation and goodwill. The Courts consider factors like likelihood of confusion, the defendant’s intent to exploit goodwill, the probability of damage and the balance of hardship when evaluating a quia timet injunction.

1. Kuldip Singh v. Subhash Chander Jain, (2000) 4 SCC 50: AIR 2000 SC 1410. 454. (1884) LR 28 Ch.D 688.
2. Fletcher v. Bealey, (1884) LR 28 Ch. D. 688
3. Mars Inc.v. Kumar Krishna Mukerjee, (2003) 26 PTC 60 (Del)
4. Direct Line Group Ltd. V. Direct Line Estate Agency Ltd, 1997 FSR 374
5. Marks & Spencer Plc. V. One in a Million Ltd, 1998 FSR 265