Theos v. Theobroma: Delhi High Court clarifies and finalises settlement terms in trademark infringement suit

The Delhi High Court recently issued certain clarifications and effectively finalised the settlement terms in the trademark infringement suit between confectionery brands Theos and Theobroma. [Theos Food Pvt Ltd & Ors v. Theobroma Foods Pvt Ltd].Justice Prathiba M Singh issued the clarifications after being informed by both parties that they could not reach a settlement in line with the Court's earlier July 29, 2022 order. .The case arose out of a suit filed by Theos to restrain Theobroma from using the mark ‘THEOS’. After the parties expressed that they were willing to settle the dispute amicably, the Court passed an order in July 2022 outlining guidelines to facilitate the settlement. Theobroma had agreed to restrict its use of the THEOS mark to five of its products.Theos had agreed not to conduct online sales outside the Delhi-NCR region under the THEOS mark.The terms specified that Theos had the option to expand beyond Delhi-NCR, provided they used a mark that was neither identical nor deceptively similar to THEOBROMA. Furthermore, Theos had the liberty to incorporate a prefix or a suffix into the THEOS mark, as long as it did not create any similarity to the THEOBROMA mark.. Pertinently, Theos and Theobroma were directed to decide on the detailed terms of the settlement. However, due to disagreements, both parties repeatedly sought adjournments until they eventually informed the Court that a settlement could not be reached. As such, they proposed that the suit could be decreed or disposed of in accordance with the July 2022 order, with some clarifications being added on pending disputes between the parties..The parties sought clarifications in four areas, on which the Court ruled:.1. The use of the mark THEOSTheos contended that Theobroma had registered only the mark THEO and hence ought not to use the mark THEOS (with an "s"). Theobroma, however, contended that they had used the mark THEOS for several years.The Court said that the terms of settlement in its previous order were clear to the effect that Theobroma could use the mark THEOS for five products, namely, Theos Dutch Truffle Cake, Theos Chocolate Mousse Cup, Theos Mava Cake, Theos Dense Loaf and Theos Quiche.2. Geographical limitation on the use of the markIn light of its restriction to Delhi-NCR, Theos apprehended that it would face difficulties in enforcing its trademark rights in the marks THEO or THEOS in other places of India.In view of this apprehension, the Court clarified that the restriction imposed on Theos would not affect its statutory and common law rights to seek injunctions against any misuse of identical or similar marks.3. Limitation as to Nice classificationTheos contended that Theobroma's registration of the THEO mark should be restricted to class 30 (foodstuffs) and should not be permitted to be retained in other classes.The Court clarified that the use of the mark would be in respect of only the five products mentioned by the Court, irrespective of class.4. QR menu cardTheobroma sought a modification of the Court order so that it is permitted to use the THEO mark on its physical as well as QR code menus. Theos submitted that it had no objection to this, as long as it was limited to menus in physical outlets only. .On these terms, the Court decreed the suit and disposed of it..Theobroma was represented by Senior Advocate Rajshekhar Rao and Advocates Rahul Vidhani and Manoj K Menda.Theos was represented by Advocates Kapil Wadhwa, Surya Rajappan and PDV Srikar. .Theos v. Theobroma: How the trademark dispute was settled before the Delhi High Court.[Read Order]