Battle of Theo’s and Theobroma decided in favor of Theobroma (Pdf Attach)

The battle of copyright between the Theo’s and Theobroma is decided.
It is submitted by Mr. Wadhwa, ld. Counsel that Defendant has registered the mark “THEO” and, therefore, it should be using the mark ‘THEO’ without the `S’. and ought to be restricted from using the mark “THEOS” or “THEO’S”. Mr. Rao, ld, opposes this. Sr. counsel for the Defendant on the ground that it has been using the mark with the `S’ for the last several years. But the Mumbai based brand Theobroma is also using the same for some of its products. There were following major considerations-

i- Use of the mark “THEOS”Both the parties are using the word Theo with S. Now the question is which one should be allowed to use the word Theo’s

ii- Geographical limitation on the use of the Mark

The second area of dispute is in respect of registration of the Plaintiff’s marks only to the restricted territory of “Delhi-NCR region” as posited in paragraph 9(v) of the order dated 29th July, 2022. This according to Mr. Wadhwa, ld. Counsel would create difficulties for the Plaintiffs in enforcing their rights in the mark “THEOS”/ “THEO’S” as the Plaintiffs may be unable to file oppositions or seek injunctions against use of the mark in other geographical territories within India.

iii-Limitation as to NICE Classification

On the Defendant’s retention of the “THEO” mark registrations, the submission of ld. Counsel for the Plaintiff is that the mark “THEO” which is registered in favour of the Defendants should now be restricted to class 30 and should not be permitted to be retained in other classes.

iv-QR Menu Card

Mr. Rajshekhar Rao, ld. Senior Counsel seeks modification of paragraph 9(iv) of order dated 29th July, 2022 to the limited extent that usage of the mark “THEO” by the Defendant should be permitted in respect of the five items in both physical and QR menu cards. Mr. Wadhwa submits that the Plaintiff has no objection as long as the use is limited to QR menu cards as used in the physical outlet only and not on food aggregator or food delivery platforms.

After taking into consideration all the arguments it was decided as follows-

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 of disputes, 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-Theobroma shall restrict such use of the mark “THEOS”/”THEO’S” only for the names of the following five food items offered by it, along with variants being egg/without egg and sizes i.e., pastry slice, per kg. size thereof:

1. Theos Dutch Truffle Cake

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 physical/QR menu cards used at the physical outlets of Theobroma, and shall not extend to online menu cards of The obroma.

v-Theos shall also not make any online sales outside the 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”.

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, 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.

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