Delhi High Court: In a case relating to two marks being ‘Theobroma’ (‘defendant’) and Theos (‘plaintiff’), based out of Bombay and Delhi respectively and having various disputes pending between the parties, settlement was arrived before Prathiba M Singh J. The parties listed terms of settlement wherein Theo declared recognizing the ownership of Theobroma over the marks in dispute.
Plaintiff 1 and 2 are ‘THEOS FOOD PVT. LTD.‘ or ‘THEOS PATISSERIE & CHOCOLATARIE‘ (hereinafter, ‘Theos’), which are based out of Delhi and Noida, and the Defendant is ‘THEOBROMA FOODS PVT. LTD.‘ (hereinafter, ‘Theobroma’), which is based out of Mumbai, Maharashtra. ‘THEOBROMA’ and ‘THEOS’/ ‘THEOS’ used in respect of bakery related products, patisseries, confectionery etc. The dispute, in the present case, relates to two marks being ‘THEOBROMA’ and ‘THEOS’/‘THEO’S’ used in respect of bakery related products, patisseries, confectionery etc.
There are two proceedings pending between the parties. The said two proceedings are:
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The first is a Commercial IP Suit “Theobroma Foods Pvt. Ltd. v. Mr. Karan Narula” pending before Bombay High Court seeking an injunction restraining Theos from using the marks ‘THEOBROMA’, ‘Theobroma’ ‘theobroma’, ‘theo’, ‘Theo’, ‘Theo’s’, ‘Theos’ and various other variant and derivatives thereof, as also, any other mark which is identical or deceptively similar to Theobroma’s marks. The suit stands pending with no relief granted.
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The instant suit being the second proceeding was filed seeking permanent injunction restraining Theobroma from infringing the trademark ‘THEOS’, ‘THEO’S’ and ‘THEO’S PATISSERIE & CHOCOLATARIE’, passing off, unfair competition, dilution, blurring, damages, rendition of accounts, and delivery up, and other reliefs.
The instant suit was filed alleging that Theobroma is using the mark ‘THEOS’ as a prefix to the names of various food items being sold in the outlets of Theobroma. However, a perusal of a plaint filed before Bombay High Court shows that Theobroma claims to be the prior adopter and user of the impugned marks. In the year 2004, Theobroma opened its first retail outlet/café next to Cusrow Baug at the iconic Colaba Causeway, Mumbai, under the mark and name ‘THEOBROMA Food of the Gods’. It has acquired immense goodwill and a reputation and has become a household name having total of 81 retail outlets/cafés at Mumbai, New Delhi, Pune, Noida, Bengaluru, amongst others having several trademark registrations in respect of the mark ‘THEOBROMA’ and its variants.
Theos, however, operates a chain of bakeries/restaurants/cafés/lounges under the mark ‘THEOS’/‘THEO’S’ in the Delhi-NCR region having a wide variety of products on its menu such as chocolates, cookies, a wide selection of desserts and cheesecakes, hot/cold beverages among other milk and nonmilk- based products. It was submitted that the mark ‘THEOS’/ ‘THEO’S’ was coined and adopted in the year 2008 and is using the mark continuously and uninterruptedly.
The Court on the last date of the hearing i.e., 08-07-2022 observed that considering the extent of the business and commercial activities of both the parties, an amicable resolution of the disputes between the parties must be explored.
Thus, the parties agreed to settle their disputes in the following terms:
i) Theos recognizes and acknowledges Theobroma as the owner and proprietor of the mark ‘THEOBROMA’. Theos has also agreed not to use the mark or name ‘THEOBROMA’ in any manner whatsoever, either in respect of any products of its manufacture, or sale, or any other services.
ii) Though, Theobroma had initially objected to the use of the mark ‘THEOS’/‘THEO’S’ by Theos, however, in view of the amicable resolution today, Theobroma no longer objects to the use of the mark ‘THEOS’/‘THEO’S’ in respect of its goods and services, as also, as part of its trading style/name ‘Theos Food Pvt. Ltd.’ and ‘Theos Patisserie & Chocolaterie’, so long as Theos restricts its business activities to the Delhi-NCR region.
iii) Insofar as the use of the mark/name ‘THEOS’/‘THEO’S’ in the physical menu cards and signages of Theobroma, as also, on online menu cards and social media of Theobroma is concerned, Theobroma shall restrict such use of the mark ‘THEOS’/‘THEO’S’ only for the following five food items offered by it, along with variants being egg/without egg and sized i.e., pastry slice, per kg. size thereof
1. Theos Dutch Truffle Cake
2. Theos Chocolate Mousse Cup
3. Theos Mava Cake
4. Theos Dense Loaf
5. Theos Quiche
iv) The said usage of the mark, as set out in (iii) above, shall only be in the menu cards used at the physical outlets of Theobroma, and shall not extend to online menu cards of Theobroma.
v) Theos shall also not make any online sales outside Delhi- NCR region under the mark/name ‘THEOS’/‘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’.
vi) Theobroma shall continue to retain all its trademark registrations for ‘THEOBROMA’ and its registered variants and derivatives, including ‘THEOS’ and ‘THEO’, and shall also be entitled to protect and take all enforcement-related steps and opposition-related actions to safeguard its rights in these names and marks.
vii) Theos shall be free to register its own mark ‘THEOS’/‘THEO’S’ as a word mark or in any logo form thereof, and use the same only in respect of goods and services offered in the Delhi-NCR region. The applications or registrations of the said marks by Theos shall be geographically restricted to the Delhi-NCR region.
viii) Neither party shall oppose each other’s marks or object to the same, in any manner, so long as the same are in compliance with the terms of this settlement.
ix) 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, as set out in (v) above. The said mark/name shall not be identical or deceptively similar to ‘THEOBROMA’.
x) 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’ are concerned.
Thus, all the disputes between the parties stand resolved, in the terms specified above. The Court thus listed the case for 24-08-2022 for receipt of the settlement application.
[Theos Food Pvt Ltd. V. Theobroma Foods Pvt Ltd., 2022 SCC OnLine Del 2309, decided on 29-07-2022]
Advocates who appeared in this case :
For plaintiff: Mr. Jayant Mehta, Sr. Advocate with Mr. Kapil Wadhwa, Ms. Surya Rajattan and Mr. Abhishek Tiwari, Mr. Srikar, Advocates along with Plaintiff No.3 – Mr. Gaurav Wadhwa and Plaintiff No.4 – Mr. Vikram Narula.
Mr. Rahul Vidhani and Mr. Manoj Menda, Advocates along with Ms. Kamal Messman, Advocates, for the Defendant.
*Arunima Bose, Editorial Assistant has reported this brief.