TM Infringement

Copyright and Trademark Infringement instances have increased manifold due to technical developments and sound digitization. The rampant production and distribution of goods and services violating trademarks and signature styles of brands is a common occurrence in the physical market space as well as on e-commerce websites. It requires constant vigilance of governmental authorities and the rights holders to preserve the integrity of the mark and prevent apprehended losses from weighing down their legitimate interests. Let us uncover the two most popular and possible recourses to trademark and Copyright Infringement.


What are John Doe Orders and from Where did they Originate?

John Doe Orders are also popularly and interchangeably used as Rolling Anton Pillar, Anton Pillar, or Ashok Kumar Order. The concept was first developed as an extraordinary equitable remedy by the Court of Queen’s Bench in the United Kingdom, in which an injunction order was passed against an unknown defendant, permitting the plaintiff to search and seize the infringer’s premises to preserve evidence that might be destroyed or tampered with.

It was also obtained by the famous author J.K. Rowling and her publishers in 2005 against an unknown party since they apprehended that a third party may sell her novel, “Harry Potter and the Order of the Phoenix,” which was not published back then.

In one such case, namely, Tej Television Limited v. Rajan Mandal, a John Doe Order was first passed in India concerning an unauthorized transmission of a channel, Ten Sports, by a few unlicensed cable operators causing losses to the licensed cable operators and the channel itself since the channel engaged an enormous audience for the Soccer World Cup, 2002.

What is the Advantage of Seeking Such an Order from the Court?

The major advantage of seeking a John Doe Order is that it aids in curbing infringement at the earliest stage without taking an elaborate route to ensure justice is sought. It is effective and immediate in nature.

Precursors to Obtain the John Doe Order

  • The litigant must satisfy the court that his or her right has been infringed upon by another. Therefore, the litigant may require the presentation of evidence stating the instances of the previous breach and scattered infringement by known and unknown persons.
  • The litigant must establish a clear and unambiguous case before any pre-emptive relief is granted.
  • The litigant must establish that if the requested John Doe Order is not passed, third-party actions could probably lead to monetary or irreparable damages against the litigant’s interest. 


What is Quia Timet Action, and from Where did it Originate?

The Latin term ‘Quia Timet’ corresponds to the English equivalent “because he fears or apprehends.” Therefore, as the name suggests, it is an anticipatory injunction issued when the proprietor of an Intellectual Property (IP) apprehends imminent danger causing irreparable harm by an unauthorized action of another. These infringing and unauthorized actions are merely pre-empted and may not have even occurred. Hence, it safeguards the proprietor’s right before the actual harm has been caused. The same is often witnessed in the media industry and pharmaceutical sector.

Like the John Doe Order, the origin of this anticipatory injunction is also like in the English Courts of equity.


Precursors to Obtain the Quia Timet Action

Justice Pearson J, in the case of Fletcher v. Bealey, elaborated on the application of this Action 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, and 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.”

What is the Advantage of Seeking Such an Order from the Court?

The major advantage of seeking Quia Timet Action is that it preaches “nip it in the bud.” This anticipatory injunction enables the aggrieved party to obtain equitable relief against some action that may cause irreparable injury at a future event. In India, it has been issued prior to release of several movies popular amongst the masses, such as Singham, Bodyguard, and Don 2.



Linking the Media and Entertainment Industry with John Doe Orders and Quia Timet Actions

Freebooting is an escalating phenomenon in the media industry. Pirated DVDs and contraband books are often sold on the corner of every street and all over the World Wide Web, the internet, without such distributors having to pay any royalty to the rightful proprietor or government-imposed duties or tariffs. The same is a major cause of losses and devaluation of assets. It is where preventative actions such as the ‘John Doe Order’ and ‘Quia Timet Action’ become a source of rescue to prevent infringement of such rights globally. When passed by the court, the order can help prevent and restrain all known and/or unknown persons constituting part of the same class from distributing, displaying, duplicating, uploading, downloading, or exhibiting some movie, book, or audio in any manner.

The courts have been witnessing allowing such injunctions in favor of rights holders; however, it should be understood that all the precursors as mentioned above shall not be negated to hold good in the eyes of the law. Also, not all acts of a third party may be construed as harm-causing actions, as also seen in the case of Matrix Laboratories Limited v F. Hoffman-La Roche. Clinical trials are not equivalent to unauthorized use causing losses to the proprietor. Therefore, while gathering evidence constituting a susceptible intent of infringing or causing loss, attention to details of such unauthorized use or activity should be paid before marching to the court. These injunctions are valuable and eminent in the delivery of justice and, therefore, conclusively, should be deployed with caution in the interest of both the rights holder and the general public.