Delhi High Court wraps up Theos vs Theobroma trademark infringement suit
Delhi High Court wraps up Theos vs Theobroma trademark infringement suit
In 2022, the two entities agreed to amicably settle the disputes, but months later cited certain issues for inability to do so
The Delhi High Court has pronounced its ruling, with certain clarifications, in the trademark infringement suit between Theos and Theobroma, after a settlement between the two competing bakery entities.
The bench of Justice Prathiba M Singh ruled, “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.”
However, the court clarified that the geographical restriction on the registration or use of the mark Theos/Theo’s to the Delhi-NCR region would not affect its statutory and common law rights. This pertained to filing any opposition and acting against misuse of identical or similar marks in any territory within India against any third party, except Theobroma.
In July 2022, Justice Singh passed an order setting out the terms and conditions based on which the two entities agreed to amicably settle their disputes.
However, in September, the court was informed that they were unable to settle the matter due to certain issues.
The court has now ended the dispute stating that Theobroma cannot be restricted from using the mark Theos/Theo’s in view of the already agreed upon settlement.
The bench clarified that Theobroma would use the mark Theos/Theo’s only for five products - Theos Dutch Truffle Cake, Theos Chocolate Mousse Cup, Theos, Mava Cake, Theos Dense Loaf, and Theos Quiche.
While clarifying that the liberty did not extend to online menu cards of Theobroma, the court held, “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.”
It further ruled that Theos shall not make any online sales outside the Delhi-NCR region under the mark Theos/Theo’s.
The judge added, “If it intends to extend its commercial activities outside the Delhi-NCR region, either in physical or online mode, the same shall be done under a mark/name which is neither identical nor deceptively like 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 used is not identically or deceptively similar or does not create confusion with Theobroma.”
The court further stated that if Theos received requests for online supply or deliveries outside the Delhi-NCR region, the same shall be serviced under a different mark and name, not identical to Theobroma.
The bench held, “There are various disputes pending between the parties before the Registrar of Trademarks, apart from the two aforementioned suits, as well as other cancellation petitions, etc. All disputes between the parties would stand resolved in the above terms.”
