Quia Timet Actions and Declarations of Non Infringement
Chapter One Hundred Forty
Syllabus topic 4.2t, "Threat of Legal Proceedings."
Pages 633 to 636 of 742
In one line
A quia timet action restrains a wrong that has not yet happened, and a declaratory suit settles rights without asking for anything else, and both are used in trade mark practice by the party who wants to move first.
Quia timet
The phrase means "because he fears". A quia timet action is brought before the wrong is committed, to prevent it.
The requirement is an imminent and apprehended injury. Not a possibility, not a fear, but a real and imminent threat, usually shown by the defendant's own conduct: an application filed, a launch announced, packaging printed, a domain registered, a distributor appointed.
The Act contemplates it in two places.
Section 135(1) speaks of the relief a court may grant in a suit for infringement or passing off, and injunction is the first named, without any requirement that the infringement have occurred.
Section 29 itself does not require a completed sale. Section 29(6)(b) includes stocking goods for the purpose of offering them, and possession for sale is enough.
And in passing off, the damage element is satisfied by damage that is LIKELY. Lord Diplock's fifth characteristic is "causing or likely to cause actual damage", and Laxmikant V. Patel v Chetanbhai Shah, (2002) 3 SCC 65, holds that the law does not require proof of actual damage, so a plaintiff who moves before the loss has occurred is not disabled by having done so.
When a quia timet action is available
| The facts | Quia timet available? |
|---|---|
| The defendant has applied to register a conflicting mark and advertised his launch | Yes, the intention is manifest |
| Packaging bearing the mark has been printed but not used | Yes, and s.135(2)(b) permits its preservation |
| A domain name has been registered and parked | Yes, on the reasoning in Satyam Infoway |
| The defendant has merely applied to register, and nothing more | Doubtful, an application is not use |
| A rumour in the trade that a launch is planned | No |
| The defendant has done it before and stopped | Yes, if a resumption is apprehended |
Neon Laboratories Ltd. v Medical Technologies Ltd., (2016) 2 SCC 672, is the case to cite on the middle row.
Facts. The plaintiff's predecessor coined PROFOL for an anaesthetic in 1998 and applied to register it. The defendant held an earlier application for ROFOL but did not use the mark until 2004.
Held. The injunction in favour of the user was upheld. The first in the market test has always enjoyed pre eminence, and a proprietor who registers or applies early but delays use cannot then exploit a niche another has built.
Why it matters here. It shows the Court's attitude to an application unaccompanied by use: an application is not a right to enter the market at any later time of one's choosing.
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