NO DAMAGES IN QUIA TIMET ACTION

NO DAMAGES IN QUIA TIMET ACTION

By Suwarn Rajan , Advocate Supreme Court Of India & Patent  Agent ,Managing Partner, Care Intellect, 7/8, Nehru Enclave, Kalkaji Extension, New Delhi, India

The Hon’ble High Court of Delhi in one of its recent decision held that plaintiff is not entitled to claim damages in action for infringement and passing off stemming from QUIA TIMET ACTION.

What Court Held

Hon'ble Ms. Justice Reva Khetrapal while decreeing the suit CS(OS) 331/2007 titled as M/S KRBL LIMITED Versus RAMESH BANSAL & ANR. held “8. It is obvious from the aforesaid that the present action is more in the nature of a quia timet action, which action is to nip in the bud the evil contemplated, the injury apprehended and the invasion threatened, though no actual injury or damage has been caused. “Quia Timet” is actually a Latin word which means “because he fears or apprehends” and is thus a preventive action to ensure that no damage is caused to the plaintiff.

9. Further the plaintiff's own assertion in the plaint is that the defendant has all intentions to use the impugned trademark/label in Delhi and that the plaintiff's proprietary rights are likely to be prejudicially affected thereby. This clearly brings out the fact that the defendant was contemplating user and there was no actual use of the trademark and device of the plaintiff by the defendant.

Without user, in my view, there can be no question of damages.

Further, no decision has been brought to my notice wherein damages have been awarded in a quia timet action.”

The Plaintiff

The suit was filed by the plaintiff under Sections 134 and 135 read with Section 27(2) of the Trademark Act, 1999 and under Section 51 of the Copyright Act, 1957 for permanent injunction restraining the defendants from passing off their goods as those of the plaintiff, infringement of copyright, rendition of accounts, delivery up and damages.. The plaintiff company stated to be engaged in the business of processing, marketing and exporting of rice of various kinds, including Basmati rice under trademark “INDIA GATE” with the device “INDIA GATE” .

The Defendants

It was alleged on behalf of the plaintiff that plaintiff in June, 2006 learnt about the defendant's illegal adoption and contemplated use of the plaintiff’s mark from the application for registration thereof under No.1271195 in Class 30 for iodised salt and all types of salt in Trademark Journal No.1340 dated 01.03.2006 at page 1049/1050. Aggrieved with the same, the plaintiff immediately lodged a notice of opposition thereto within the statutory period. The plaintiff also launched enquiries through trade to ascertain the defendants' activities under the impugned trademark/label. The said enquiries revealed that the defendants had so far not started using the impugned trademark/label in the course of trade on its vendible goods, however, the defendant was soliciting trade, distribution and marketing networks in relation to the impugned goods under the impugned trade mark/label in Delhi and other parts of the country and had all the intention of commercially using the same.

Defendants Ex parte

 Summons of the suit were issued to the defendants which were duly served upon the defendants, but the defendants did not choose to appear in the Court and were accordingly proceeded ex parte vide order dated 23.07.2007.

Judgements relied on by Plaintiff to buttress their claim of injunction and damages on the bases of Quia Timet action

The  counsel for the plaintiff has  referred to the decision in Mars Incorporated Vs. Kumar Krishna Mukerjee & Ors. 2003 (26) PTC 60 (Del) to contend that injunction by Quia Timet action is not only appropriate but also essential and injunctive relief in such an action ought to be granted. Additionally, reference was made by the learned counsel for the plaintiff to the judgments in Hero Honda Motors Ltd. Vs. Shree Assuramji Scooters 2006(32) PTC 117 (Del) and Asian Paints (India) Ltd.Vs. Balaji Paints and Chemical and Anr. 2006(33) PTC 683 (Del) to contend that the plaintiff would also be entitled to damages. In the former case, damages of Rs.5 lacs and in the latter case damages of Rs.3 lacs were awarded in favour of the plaintiff.

Court’s Observation

The Hon’ble court further observed “It cannot be lost sight of that in the instant action the plaintiff's own case is that when it came across the Trademark Journal No.1340 dated 01.03.2006 with regard to the defendants' contemplated use of the impugned trademark and application for registration thereof, the plaintiff launched enquiries through the trade to ascertain the defendants activities under the impugned trademark/label. The said enquiries revealed that “the defendant has so far not started using the impugned trademark/label in the course of trade on its vendible goods and business and nor has the plaintiff so far come across any of the impugned vendible goods under the impugned trademark/label in the market, however, the defendant is soliciting trade, distribution and marketing networks in relation to the impugned goods under the impugned trademark/label in Delhi and other parts of the country. The defendant has all intention of commercially using the impugned trademark/label in relation to the impugned goods/business, if not already so used.”