‘Quia Timet’, is a Latin phrase to mean: ‘because it is feared or apprehended’.  It is an action, to prevent a party from a wrongful act, which is anticipated to be either threatening or imminent, but has not yet begun which may harm the aggrieved party.

Quia Timet Action (QTA), is a remedy, which has a long history with influences from injunctive relief in property disputes,  lawsuits for document cancellation under specific relief law, preventional detention under criminal law and other such cases. However, modern day trademark passing off actions are merely inspired by the principles laid down by Court of Chancery’s landmark judgement of Fetcher vs Bealey. This remedy has effectively replaced the typical way of framing ‘acts of the defendant’ to framing ‘likelihood or apprehension of acts that might be done by the Defendant’.

Generally, in a passing off and / or trademark infringement suit, an injunction is usually granted to Plaintiff when the Defendant commits some wrong. However, QTA is an injunction that allows a Plaintiff to protect its rights, even before there is violation of such rights. This is on the basis of fear or apprehension that a wrong might be committed.

In India, the extension of QTA for trademark suits began by throwaway mentions of English cases in the High Courts of Bombay, Madras and Delhi. However, for trademark suits, one of the first independent and clear most endorsement of QTAs can be traced from the Delhi High Court’s Mars Incorporated vs Kumar Krishna Mukherjee & Ors. (“Mars Case”).

The plaintiff was a registered owner and user of the trademark ‘Mars’ for chocolate, confectionery and other preserved food products. The Defendant, although had incorporated a company in the name of Mars Food Private Limited had neither commenced any business nor had used the mark ‘Mars’ in respect of their business. Fearing infringement, the Plaintiff initiated a suit for QTA before the Delhi High Court against the Defendants. The Plaintiff choose to file a suit for QTA as no goods and/or services of Defendants bearing the mark ‘Mars’ were found.

The Delhi High Court while granting reliefs, realized that it is of utmost importance to first decide whether the Plaintiff is entitled to such an injunction or not. Therefore, while deciding the suit under QTA, the court sought out three conditions that were essential to qualify as a QTA. They are as follows:

a. That the Plaintiff’s right must be under threat;

b. That such a threat to Plaintiff’s right should be “substantial and material”; and

c. That such a threat, if carried out, could cause substantial damage for which granting of any monetary compensation would be inadequate.

Keeping the above three principles in mind, the Delhi High Court concluded and injuncted the Defendants while further laying down four tests, that were to be satisfied for maintainability of a QTA. They are as follows:

a. The goods and services sold by the Defendant should be similar to that of Plaintiff’s, and such goods and services should likely cause confusion or deception;

b. That the Defendant’s intention was to override goodwill and reputation of the Plaintiff;

c. That there is and was likelihood or reasonable probability of real or tangible damage or injury to the Plaintiff if the Defendant were to act; and

d. That the hardships faced by Plaintiff are greater than that of Defendant, if an injunction was to be rejected against the Defendant.

These above laid principles in the Mars case, are the basis on which suit for QTA suits are usually decided. The court recognized the importance of protecting a well-known trademark and protecting damages to the reputation of the brand. Overall, the Mars Case highlighted the importance of trademark owners being proactive in protecting their Intellectual Property Rights, and the legal options available to them in doing so.

The Mars Case is a landmark judgement that has laid down the principle of QTA, which was thereafter upheld by many High Courts. Some of the cases were Intel Corporation vs Harpreet Singh and Merck Sharp & Dohme Corporation vs Aprica Pharmaceutical cases.

In most cases of QTA, plaintiffs are granted reliefs including ex-parte relief, despite the fact that the cause of action is not fully being formed. However, damages in such cases are not awarded, as damages are merely apprehended and not actually caused. To simplify, QTA enables Plaintiff to seek injunction by apprehending violation of trade mark rights.

A stitch in time always saves nine and that is the essence of Quia Timet Action. It is a strong tool which the trademark owners can use to restrict potential trademark infringers from infringing upon the goodwill and reputation of a mark. Many trademark proprietors have approached the Courts with QTA suits as such injunction action provides a quick and effective means of preventing harm as compared to a traditional trademark infringement suit. However, it is worth noting that courts follow a strict procedure to avoid abuse of this legal process. The courts carefully examine the facts and circumstances of each case and ensure that any injunction granted, is based on genuine fear of infringement and is not just to restrict competition and innovation. 

Bhushan Shah is a Partner, Meeta Kadhi is a Senior Associate and Kanak Kadam is an Associate at Mansukhlal Hiralal & Co.