Delhi High Court
Theos Food Pvt Ltd & Ors. vs Theobroma Foods Pvt Ltd on 29 July, 2022
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 29th July, 2022
+ CS(COMM) 429/2021 & I.A. 11653/2021, 15732/2021
THEOS FOOD PVT. LTD. & ORS. ..... Plaintiffs
Through: Mr. Jayant Mehta, Sr. Advocate with
Mr. Kapil Wadhwa, Ms. Surya
Rajattan and Mr. Abhishek Tiwari,
Mr. Srikar, Advocates.
(M:9891929028) along with Plaintiff
No.3 - Mr. Gaurav Wadhwa and
Plaintiff No.4 - Mr. Vikram Narula.
versus
THEOBROMA FOODS PVT. LTD. ..... Defendant
Through: Mr. Rahul Vidhani and Mr. Manoj
Menda, Advocates. (M:9811545888)
along with Ms. Kamal Messman.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh(Oral)
1.
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. The competing entities are
the Plaintiff Nos.1 and 2 being 'THEOS FOOD PVT. LTD.' as also
'THEOS PATISSERIE & CHOCOLATARIE' (hereinafter, 'Theos'), which
are based out of Delhi and Noida, and the Defendant being 'THEOBROMA
FOODS PVT. LTD.' (hereinafter, 'Theobroma'), which is based out of
Mumbai, Maharashtra.
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
2. There are two proceedings pending between the parties. The said two
proceedings are as under:
i. Commercial IP Suit No.342 of 2016 titled "Theobroma
Foods Pvt. Ltd. v. Mr. Karan Narula and Ors." pending
before the Bombay High Court;
ii. Present suit being CS(COMM) 429/2021 titled "Theos Food
Pvt. Ltd. & Ors. v. Theobroma Foods Pvt. Ltd."
3. In the suit being Commercial IP Suit No.342 of 2016 filed by
Theobroma before the Bombay High Court, an injunction has been sought,
restraining Theos from using the marks 'THEOBROMA', 'Theobroma',
'theobroma', 'theo', 'Theo', 'Theo's', 'Theos' and various other variants
and derivatives thereof, as also, any other mark which is identical or
deceptively similar to Theobroma's marks. No interim relief was granted in
the said suit. The said suit is pending.
4. In the present suit before this Court, Theos seeks 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 case of Theos is that Theobroma is using
the mark 'THEOS' as a prefix to the names of various food items being sold
in the outlets of Theobroma.
5. A perusal of the court record in the present suit, as also, the amended
Plaint filed before the Bombay High Court shows that Theobroma claims to
be a leading name in the business of manufacturing and selling gourmet
foods, including bakery and confectionary products and beverages
including, inter alia, cakes, brownies, desserts, pastries, and chocolates.
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
Theobroma also 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'. Since then, over the years,
Theobroma's trademarks, are stated to have acquired immense goodwill and
reputation and Theobroma is stated to have become a household name. It has
expanded all across India, with a total of 81 retail outlets/cafés at Mumbai,
New Delhi, Pune, Noida, Bengaluru, amongst others. As set out in the
Written Statement, Theobroma has obtained several trademark registrations
in respect of the mark 'THEOBROMA' and its variants, some of which are
set out below:
S.No. Trademark App/Reg. Status Class
No.
1. THEOBROMA 1315545 Registered 30
2. 1520677 Registered 30
3. 2291823 Registered 30
4. 2301544 Registered 30
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
5. THEOS 2325888 Opposed 43
by
Plaintiff
No.4 -Mr.
Karan
Narula
6. 3503532 Registered 29
6. On the other hand, Theos is engaged in the business of providing
restaurant services, sale of bakery and confectionary items, and the
production, preparation and sale of varied food products. As per the Plaint,
Theos operates a chain of bakeries/restaurants/cafés/lounges under the mark
'THEOS'/'THEO'S' in the Delhi-NCR region. Theos has 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 non-
milk-based products. It is submitted that the mark 'THEOS'/'THEO'S' was
coined and adopted in the year 2008. Since then, Theos is stated to have
used the mark continuously and uninterruptedly in respect of bakery related
products in Class 30 and restaurant services in Class 43, and its marks are
stated to have garnered valuable goodwill and reputation. The details of
Theo's trademark registrations/applications, as set out in the Plaint, is
tabulated below:
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
S.No. Trademark App/Reg. Status Class
No.
1. 1755398 Registered 30
2. 3294501 Registered 43
3. THEOS 4061919 Opposed 30
(Wordmark) by
Theobroma
7. On the last date of hearing i.e., 8th July, 2022, submissions were heard
on behalf of both the parties. Thereafter, it was observed that considering the
extent of the business and commercial activities of both the parties, an
amicable resolution of the disputes between the parties ought to be explored.
Accordingly, the parties were directed to be personally present on the next
date.
8. Today, Theos is represented before this Court by Mr. Gaurav
Wadhwa and Mr. Vikram Narula, the directors/partners of Theos. Ms.
Kamal Messman, the Founder-Director of Theobroma is also present before
this Court. Both parties are duly represented by their respective counsels,
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
including counsels from Mumbai.
9. This Court has interacted with the parties, as also, ld. Counsels for the
parties. Various proposals were discussed in the pre-lunch session. The
matter has been taken up post-lunch. The parties have broadly agreed to
settle their disputes, in the following terms:
i. Theos recognises 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
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
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'.
v. 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.
vi. Theos shall be free to register its own mark
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
'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.
vii. 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.
viii. 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'.
viii. 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.
ix. There are various disputes pending between the parties
before the Registrar of Trademarks, apart from the
aforementioned two suits, as also, other cancellation
petitions, etc. All the disputes between the parties would
stand resolved, in the above terms.
x. Parties have agreed to abide by the terms of settlement which
have been dictated by the Court today and set out
hereinabove.
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
10. Ld. Counsels for the parties submit that they wish to file a
comprehensive joint application under Order XXIII Rule 3 CPC, setting out
the settlement terms elaborately. Let the said application be filed, within
two weeks.
11. List on 24th August, 2022, for receipt of the settlement application.
12. This is a part-heard matter.
PRATHIBA M. SINGH
JUDGE
JULY 29, 2022
dj/ad
Signature Not Verified
Digitally Signed
Signing Date:03.08.2022
14:57:33
