Theos v. Theobroma: Delhi High Court Closes Trademark Infringement Suit, Issues Clarifications

The Delhi High Court has decreed with certain clarifications a trademark infringement suit between two competing bakery entities Theos and Theobroma, after a settlement between them.

Justice Prathiba M Singh permitted bakery outlet Theorbroma to expand its outlets across the country but restrained Theos to the Delhi-NCR region.

“Theobroma is free to expand its outlets under the mark/name ‘THEOBROMA’ across the country. However, Theos shall be restrained to the Delhi-NCR region, insofar as its goods and services provided under the mark/name “THEOS”/ “THEO’S” is concerned,” the court said.

The court however clarified that the geographical restriction on registration or use of the mark “Theos” or “Theo’s” to the Delhi-NCR region would not affect its statutory and common law rights to file oppositions and to take action against any misuse of identical or similar marks in any territory within India against any third party, except Theobroma.

On July 29 last year, Justice Singh had passed an order broadly setting out the terms and conditions on the basis of which both the entities had agreed to settle their disputes amicably.

However, on September 25, the court was informed that the parties were unable to file the settlement agreement in view of certain areas of disputes.

Putting an end to the dispute, the court said that Theobroma cannot be restricted from using the mark “Theos” or “Theo’s” in view of the settlement already agreed upon.

It also clarified that Theobroma will use the mark “Theos” or “Theo’s” only for the five products i.e. Theos Dutch Truffle Cake, Theos Chocolate Mousse Cup, Theos, Mava Cake, Theos Dense Loaf and Theos Quiche.

“Accordingly, it is clarified that the Defendant is permitted to use the mark “THEOS/THEO’S” for the five items in both physical and QR menu cards used in the physical outlets of Theobroma,” the court said. This liberty does not extend to online menu cards of Theobroma.

Justice Singh also said that Theos shall not make any online sales outside Delhi-NCR region under the mark “THEOS” or “THEO’S”.

“If it intends to extend its commercial activities outside the Delhi-NCR region, either in physical or in online mode, the same shall be done under a mark/name which is neither identical nor deceptively similar to “THEOBROMA”. Theos, however, is free to use a prefix or a suffix along with “THEOS”/ “THEO’S” for such expansion, so long as the totality of the mark/name which is used for such expansion is not identically or deceptively similar or does not create confusion with “THEOBROMA”,” the court said.

It added that if Theos receives any requests for online supply or deliveries outside the Delhi-NCR region, the same shall be serviced under a different mark and name which shall not be identical or deceptively similar to ‘THEOBROMA’.

“There are various disputes pending between the parties before the Registrar of Trademarks, apart from the aforementioned two suits, as also, other cancellation petitions, etc. All the disputes between the parties would stand resolved in the above terms,” the court said.

Case Title: THEOS FOOD PVT. LTD. & ORS. v. THEOBROMA FOODS PVT. LTD.

Citation: 2023 LiveLaw (Del) 909

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