Theos vs Theobroma: Famous Trademark Dispute Settlement Matter

Both THEOBROMA and THEOS are renowned premium bakery outlets that have been serving customers much more than just delicious patisseries for a long time. Since both outlets deal with identical goods & services and have the common starting syllables “THEO” in their brand names, they entered into a dispute, which is now finally settled by the Delhi High Court. Recently, the confectionary brand Theos agreed to retrain its services for goods bearing the THEOS mark to the Delhi-NCR area in a Trademark Dispute with Theobroma before the Delhi High Court. In this write-up, we will discuss the Trademark Dispute of Theos vs Theobroma in detail.

Background of the Dispute Between Theos vs Theobroma

• Before the Bombay High Court (Theos vs Theobroma):

In 2015, Theobroma filed a lawsuit 1 against Theos before the Bombay High Court, seeking an injunction from using the marks THEOBROMA, theo, Theobroma, Theobroma, Theo’s, Theos and various other variants & derivatives thereof. In this lawsuit, Theobroma claimed to be the prior user of the marks THEOBROMA and THEOS in respect of similar products & services from the opening of its 1^st retail outlet in Mumbai in the year 2004 under the trading style of THEOBROMA.

Apparently, there is no injunction order/any other interim relief granted by the Bombay High Court^[1] in favour of THEOBROMA and said suit is still adjudication.

• Before the Delhi High Court (Theos vs Theobroma):

In 2021, Theo filed a suit 2, seeking a verdict on permanent injunction from Trademark Infringement, passing off action, unfair competition, blurring, dilution, damages, rendition of accounts and delivery up against Theobroma (Theos vs Theobroma)before the Delhi High Court. Theos operates bakeries or restaurants or lounges, or cafes under the mark THEOS or THEO’S in the Delhi-NCR area & has a wide variety of products on its menu like cookies, chocolates, an extensive selection of cheesecakes & desserts, hold or cold beverages, among other milk & non-milk based items. Theos claimed that the Trademark or mark THEOS or THEO’s was coined & adopted by them in 2008.

Thus, Theos claimed to have used the Trademark or mark continuously & uninterrupted in respect of bakery-related products in Class 30 & restaurant services in Class 43& its marks are stated to have garnered valuable goodwill & reputation for its brand.

Submission by Theos – Theo vs Theobroma Trademark Dispute

The case of Theos is that Theorbroma was never using the THEOS mark but has not started expanding & using the same in respect of beverages, pastries, chocolates, etc. They sought an injunction against Theobroma from violating the marks THEOS, THEO’S & THEO’S PATISSERIE and CHOCOLATARIE. The Delhi HC, vide its order dated 13^th September 2021, refused an ex-parte ad-interim injunction in favour of Theos while observing that the Trademark of Theobroma is registered & they are entitled, at the very least, to a good opportunity to respond to the injunction application before the Court passes an order.

Amicable Settlement of Disputes (Theos vs Theobroma)

The issue came up for hearing before Delhi HC on July o8, 2022, wherein the Hon’ble Court granted a chance3 or an opportunity to the parties to explore the possibility of an amicable settlement before determining the merits of the case.

The Hon’ble Court marked that the primary grievance of Theobroma before the Bombay HC was Theos use of the mark (THEOBROMA), which THEOS is no longer using & the only dispute between the parties is now concerning the mark THEOS.

Finally, both parties were able to arrive at an agreeable settlement on the following terms:

• Theos acknowledges & recognises Theobroma as the owner of the mark THEOBROMA. Theos has agreed not to use the name or mark “THEOBROMA” in any way whatsoever, either in respect of any products or goods of its manufacture/sale/any other services;
• Theobroma no longer objects to the usage of the Trademark or mark THEO’s or THEOS by Theos concerning its goods & services, as also as part of its trading name or style Theos Patisserie &Chocolaterie and Theos Food Pvt. Ltd. so long as Theos restrains its business activities to the Delhi-NCR area.
• Theobroma shall limit its use of the mark THEO’S or THEOS only for the following 5 food products offered by it, along with variants being eggs or without eggs & sized (pastry slice per keg, size thereof):
• Theos Mava Cake;
• Theos Quiche ;
• Theos Dutch Truffle Cake;
• Theos Dense Loaf;
• Theos Chocolate Mousse Cup.
• The proposed usage of the mark, as set out in the above point, shall only be in the menu or menu cards used at the physical outlets of Theobroma and shall not extend to the online menu cards of Theobroma.
• It (THEOS) shall be free to register its own Trademark or mark THEOS/THEO’s as a word or mark or in any logo form thereof & use the same only in respect of products & services provided in the Delhi-NCR region. The Registrations or applications of the said marks by Theos shall be geographically restricted to the Delhi-NCR region.
• Theos shall not make any online sales outside Delhi or NCR region also under the name of mark THEO’S or THEOS. If it intends to extend or increase its commercial activities outside the Delhi-NCR area, either in physical/online mode, the same shall be done under a mark or name which is neither identical nor deceptively identical to THEOBROMA. However, Theos is free to use a prefix/suffix along with THEO’S or THEOS for such growth or expansion, so long as the totality of the name or mark which is used for such expansion is not similar or deceptively similar or doesn’t create confusion with THEOBROMA.
• Theobroma shall continue to retain all its mark or Trademark Registrations for THEOBROMA and its registered variants & derivatives comprising THEO & THEOS and shall also be entitled to safeguard and take all enforcement-related steps & opposition-related actions to protect its rights in these names & marks.
• It (Theo) shall be free to register its own Trademark or mark THEOS/THEO’s as a word mark/in any logo form thereof & use the same only in respect of goods & services provided in the Delhi-NCR region. The applications or registrations of the proposed marks by Theos shall be geographically restricted to the Delhi-NCR region.
• Neither party shall oppose each other’s marks/object to the same, in any way, so long as the same are in compliance with the terms of this dispute settlement.
• If Theos gets any requests for online supply/deliveries outside the Delhi-NCR region, the same shall be serviced under a different name & mark, the said mark or name shall not be similar or deceptively similar to THEOBROMA. Theobroma is free to expand or increase its outlets under the name or name “THEOBROMA” across the nation. However, Theos shall be restrained to the Delhi-NCR region/area insofar as its goods & services provided under the name or mark THEO’S or THEOS is concerned.
• Various disputes are pending between the parties before the Registrar of Trademarks, apart from the 2 suits mentioned above, as also as other cancellation petitions, etc. All the disputes or conflicts between the parties would stand resolved in the above terms.

Conclusion

So, in the end, the parties have agreed to abide by the terms of the settlement, which have been dictated in the Court & sought time to file a joint compromise application by elaborately settling out the above-mentioned terms. The suit or case is yet to be decreed finally in terms of the compromise application.

Read our Article:What is a Composite Mark? – Meaning and Trademark Registration Process