‘THEOBROMA FOODS PVT. LTD.’ (‘Theobroma’- which means the ‘Food for the Gods’ as well as the name of a flowering plant), Mumbai has become a household name in respect of bakery related products, patisseries, confectionery etc. having total of 81 retail outlets/cafés across several locations like Mumbai, New Delhi, Pune, Noida, Bengaluru, amongst others has multiple trademark registrations in respect of the mark ‘THEOBROMA’ and its variants.

 

 

 

‘THEOS PATISSERIE & CHOCOLATARIE’ (‘Theos’- which means ‘God’ in ancient Greek), and operates a chain of bakeries / restaurants / cafés / lounges under the mark ‘THEOS’ /‘ THEO’S’ in the Delhi-NCR region.

 

 

It was the case of Theos that Theobroma was using the mark 'THEOS' as a prefix to its several food items being sold at its outlets. Hence, Theos approached the Delhi High Court seeking a permanent injunction against Theobroma from infringing its marks ‘THEOS’, ‘THEO’S’ and ‘THEO’S PATISSERIE & CHOCOLATARIE’, and claimed passing off, unfair competition, dilution, blurring, damages, rendition of accounts and other reliefs. Theos claimed that it had coined and adopted the mark ‘THEOS’/ ‘THEO’S’ since 2008 and had used the mark continuously and uninterruptedly thereafter.

 

 

 

 

However, on an earlier date, Theobroma had approached the Bombay High Court stressing on the fact that usage of the “dominant feature” of their mark would amount to infringement of their trademark and to restrain Theos from using the marks ‘THEOBROMA’, ‘Theobroma’ ‘theobroma’, ‘theo’, ‘Theo’, ‘Theo’s’, ‘Theos’ as well as its variants and derivatives thereof. A perusal of a plaint filed before Bombay High Court reflects Theobroma to be the prior adopter and user of the impugned marks. However, there was no relief granted by the Bombay High Court.

 

However, in the present dispute, the Delhi High Court observed that, considering the extent of the business and commercial activities of both the parties, an amicable resolution of the disputes between the parties must be explored. Thus, the parties listed the terms of settlement and agreed to settle their disputes as per the following: i) Theos recognized and acknowledged Theobroma as the owner and proprietor of the mark ‘THEOBROMA’. Theos 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, Theobroma agreed to no longer 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 restricted 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 agreed to restrict the use of the marks ‘THEOS’/‘THEO’S’ only for the following five food items offered by it namely,

 

 

(The said usage of the mark, as set out in (iii) above, shall only be within the menu cards used at the physical outlets of Theobroma, and shall not extend to online menu cards of Theobroma.)

 

v) Theos agreed to 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 was agreed to be done under a mark/name which shall neither be 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’.

 

vi) 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.

 

vii) Theos shall be free to register its own mark ‘THEOS’/‘THEO’S’ as a word mark or in any logo form thereof, (since the applications for trademark registrations were initially filed by Theos however, were abandoned by the proprietor) and use the same only in respect of goods and services offered in the Delhi-NCR region. The applications or registrations of their marks shall be geographically restricted only to the Delhi-NCR region.

 

viii) 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.

 

ix) Theobroma is free to expand its outlets under the mark/name ‘THEOBROMA’ across the country. However, Theos agreed to limit its business activities to the Delhi-NCR region, insofar as its goods and services provided under the mark/name ‘THEOS’/ ‘THEO’S’ are concerned.

 

The parties also agreed to resolve the various disputes pending between the two in terms of the settlement.

 

Author’s note –

 

A critical analysis of the judgement raises a few pertinent issues such as; can ‘God’ be limited as to a particular geographical area and/or a region, even though the same may be in Greek? Or that can ‘Theos’ or the meaning of God be an exclusive property of a proprietor just because it is in a language that the locals are not familiar with? Definitely seems like food for thought.