Equivalent citations: CS(COMM) 429/2021 & I.A. 11653/2021, 15732/2021
Bench: JUSTICE PRATHIBA M. SINGH
Date of Judgment: 29th July, 2022
Petitioner: THEOS FOOD PVT. LTD. & ORS.
Respondent: THEOBROMA FOODS PVT. LTD.
The case started off as Theos aiming to restrict Theobroma that was using the mark ‘THEOS’ as a prefix to the names of various food items being sold in its outlets. There are two proceedings pending between the parties.
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.
The current suit being the second proceeding which 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.
Basically the current suit was filed by theos asserting that Theobroma is using the mark ‘THEOS’ as a prefix to the tags/names of various food items being sold in the outlets of Theobroma. However theobroma in its previous plaint claims to be the prior user of the mark since it opened its first chain in 2004, whereas Theos opening its first branch in 2008.
OBSERVATIONS OF THE COURT-
During the hearing of July 8th 2022 it was observed that since both the parties have made a name for themselves and goodwill in the eyes of public and the huge extent of the business and commercial activities of both the parties, an amicable resolution must be achieved.
On the hearing of July 29th 2022 the court gave its decision wherein the parties broadly agreed to settle their disputes under certain conditions as well as the Ld. Counsels for the parties submitted that they wish to file a comprehensive joint application under Order XXIII Rule 3 CPC, setting out the settlement terms elaborately. The court agreed to the said application and ordered it to be filed, within two weeks. The matter is listed for August 24th 2022 for receipt of the settlement offer.
DECISION OF THE COURT CONTAINING THE AGREED UPON TERMS-
- Theos assented not to use the mark or name ‘THEOBROMA’ in any modus of any kind, either in respect of sale, or any products of its manufacture, or any other services. Theos furthermore acknowledged THEOBROMA as the owner and proprietor of the mark.
- Theobroma though earlier objected to it, but however from now on will not object 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.
- Up until now theobrama has used ‘THEOS’/‘THEO’S’ as prefix in many of its goods, publicized through its physical and online menu as well as social media sites, however will not continue to do so and restrict the use to only five food items offered by it (all variants included) which are listed under:
- Theos Dutch Truffle
- Theos Chocolate Mousse Cup
- Theos Mava Cake
- Theos Dense Loaf
- Theos Quiche
The above listed items will only be allowed to publish only in the menu cards used at the physical outlets of Theobroma, and shall not extend to online menu cards of Theobroma.
- Theos will not make any online sales outside Delhi NCR region under the mark/name ‘THEOS’/‘THEO’S’. If it aims to extend its commercial activities outside the Delhi NCR region, the same shall be done under a mark/name which is neither identical nor deceptively similar to ‘THEOBROMA’.
Theos, nevertheless, is permitted to use a prefix or a suffix along with ‘THEOS’/‘THEO’S’ for such expansion, as long as the entirety of the mark/name which is used for such expansion is not deceptively similar or does not create misperception with ‘THEOBROMA’.
- Theobroma will continue usage of all its trademark registrations for ‘THEOBROMA’ and its registered variants and derivatives, including ‘THEOS’ and ‘THEO’, and will also be entitled to protect and take all enforcement and opposition related actions to safeguard its rights in these names and marks.
- Theos is free to register its own mark ‘THEOS’/‘THEO’S’ as a word mark or in any logo form thereof, and use the same in respect of goods and services offered in the Delhi-NCR region only. The applications or registrations of the said marks by Theos shall be geographically restricted to the Delhi-NCR region.
- As long as terms of this settlement is followed, neither party will object to the mark of the other.
- If THEOS receives any online order based out of Delhi the same should be delivered under a different mark or name prerequisite to the conditions stated in the settlement.
- 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 only until they continue to use the name ‘THEOS’/‘THEO’S’.
- The multiple suits between the two parties filed before the Registrar of Trademarks, including cancellation petitions along with the above mentioned suites will said to be resolved as per this settlement and its terms.
Thus, in the matter of Theos Food Pvt Ltd & Ors vs Theobroma Foods Pvt Ltd 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.