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Delhi HC Clarifies and Finalizes Settlement Terms in Theos vs. Theobroma Trademark Infringement Suit

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Published on: 30 September 2023 at 12:32 IST

The Delhi High Court has provided clarifications and finalized the settlement terms in the trademark infringement dispute between confectionery brands Theos and Theobroma, known as Theos Food Pvt Ltd & Ors v. Theobroma Foods Pvt Ltd.

The clarifications were issued by Justice Prathiba M Singh after both parties informed the Court that they were unable to reach a settlement based on the guidelines previously issued by the Court in July 2022.

The dispute originated from a lawsuit filed by Theos, seeking to prohibit Theobroma from using the mark ‘THEOS’ as a prefix for various food items sold in its outlets. Initially, the parties expressed their willingness to settle the dispute mutually, and the Court provided guidelines in July 2022 to facilitate the settlement. As part of these guidelines, Theos agreed to limit its services for goods bearing the ‘THEOS’ mark to the Delhi-NCR region.

However, due to ongoing disagreements, both parties repeatedly requested adjournments, ultimately informing the Court that a settlement could not be reached. Consequently, they proposed that the suit could be decreed or disposed of in accordance with the July 2022 order, with some clarifications regarding pending disputes.

The Court ruled on four specific areas of clarification:

1. Use of the mark ‘THEOS’: Theos argued that Theobroma had registered only the mark ‘THEO’ and should not use ‘THEOS.’ Theobroma claimed they had used ‘THEOS’ for several years. The Court clarified that Theobroma could use ‘THEOS’ for five specific products, as outlined in the previous order.

2. Geographical limitation: Theos expressed concern about enforcing its trademark rights outside Delhi-NCR due to the regional restriction. The Court clarified that this restriction would not affect Theos’s rights to seek injunctions against the misuse of identical or similar marks.

3. Limitation by Nice classification: Theos argued that Theobroma’s registration of the ‘THEO’ mark should be restricted to class 30 (foodstuffs) and not extended to other classes. The Court clarified that the use of the mark would be limited to the five specified products, regardless of class.

4. QR menu card: Theobroma requested permission to use the ‘THEO’ mark on physical and QR code menus. Theos agreed to this as long as it was limited to menus in physical outlets only.

Based on these terms, the Court decreed and disposed of the suit.