Theos v. Theobroma: How the trademark dispute was settled before the Delhi High Court

Confectionary brand Theos recently agreed to restrain its services for goods bearing the THEOS mark to the Delhi-NCR region, in a trademark dispute with Theobroma before the Delhi High Court. (Theos Food Pvt Ltd & Ors v. Theobroma Foods Pvt Ltd)

The Court also recorded that Theobroma shall be free to expand its outlets across the country.

Recognising the parties' mutual decision to reach a settlement, Justice Prathiba M Singh ordered,

"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 also mentioned that while Theobroma had initially objected to the use of the mark ‘THEOS’/‘THEO’S’ by Theos, the Mumbai-based confectionary brand condoned the same, contingent to Theos restricting its business to the Delhi-NCR region.

"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 Court recorded.

It further said that Theos shall not make any online sales outside the Delhi-NCR region under the said mark or name. In this regard the Court stated,

"If it (Theo's) 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’."

However, the Court also stated that Theos was free to use a prefix or a suffix along with the its mark or name for expansion, so long as the totality of the mark/name used for such expansion was not identically or deceptively similar and does not create confusion with Theobroma.

Further, the Court said that Theobroma shall continue to retain all its trademark registrations for ‘THEOBROMA’ and its registered variants and derivatives, including ‘THEOS’ and ‘THEO’. Theobroma shall be entitled to protect and take all enforcement-related steps and opposition-related actions to safeguard its rights in these names and marks.

With respect to the use of the mark or name ‘THEOS’/‘THEO’S’ on social media, physical, online menu cards and signages of Theobroma, the parties agreed that Theobroma shall restrict such use of the mark ‘THEOS’/‘THEO’S’ only for the following five food items offered by it, along with variants of the same:

1. Theos Dutch Truffle Cake

2. Theos Chocolate Mousse Cup

3. Theos Mava Cake

4. Theos Dense Loaf

5. Theos Quiche

The said usage of the mark shall only be on menu cards used at the physical outlets of Theobroma, and shall not extend to its online menu, the Court clarified.

Finally, the Court also laid down some guidelines for both parties to follow to ensure effective implementation of the settlement terms such as,

"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."

Importantly, the Court noted that all the disputes between the parties would stand resolved.

The matter will be heard again on August 24.

While Theobroma had filed a trademark infringement suit against Theos before the Bombay High Court, Theos had filed the present suit seeking to injunct Theobroma from using the 'THEOS' trademark. The case of Theos was that Theobroma was using the mark ‘THEOS’ as a prefix to the names of various food items being sold across it's outlets.

On the other hand, Theobroma claimed to be the prior adopter and user of the marks and submitted that it opened its first retail outlet/café in Mumbai back in 2004.

Senior Advocate Jayant Mehta along with Advocates Kapil Wadhwa, Surya Rajattan, Gaurav Wadhwa, Vikram Narula and Abhishek Tiwari appeared for Theo's.

Meanwhile, Advocates Rahul Vidhani and Manoj Menda appeared for Theobroma.

Read order: