The Delhi High Court recently provided specific clarifications and essentially concluded the settlement terms in the trademark infringement case involving confectionery companies Theos and Theobroma.

Justice Prathiba M Singh issued these clarifications following reports from both parties that they were unable to reach an agreement consistent with the Court's previous order dated July 29, 2022.

The case originated from a lawsuit filed by Theos with the aim of preventing Theobroma from using the 'THEOS' mark as a prefix for the names of various food products sold in its establishments. Subsequently, when both parties indicated their willingness to resolve the dispute through an amicable settlement, the Court issued an order in July 2022 outlining specific guidelines to facilitate this resolution. One of the key terms of this settlement was that Theos would restrict its services for products bearing the 'THEOS' mark to the Delhi-NCR region.

Pertinently, Theos and Theobroma were directed to decide on the detailed terms of the settlement. However, due to disagreements, both parties repeatedly sought adjournments until they eventually informed the Court that a settlement could not be reached.

In light of these developments, both parties proposed that the lawsuit could be concluded or resolved in accordance with the order issued in July 2022, while also suggesting some clarifications to address any remaining disputes between them.

The parties sought clarifications in four specific areas, and the Court issued rulings on these matters:

1. Theos argued that Theobroma had only registered the mark "THEO" and therefore should not be allowed to use the mark "THEOS" (with an "s"). On the other hand, Theobroma contended that they had been using the mark "THEOS '' for several years. The Court clarified that the terms of the previous settlement order were explicit in permitting Theobroma to use the mark "THEOS'' for five specific products, which are: Theos Dutch Truffle Cake, Theos Chocolate Mousse Cup, Theos Mava Cake, Theos Dense Loaf, and Theos Quiche.

2. Given the restriction imposed on Theos to operate only within the Delhi-NCR region, Theos expressed concerns about its ability to protect its trademark rights for the marks "THEO" or "THEOS" in other parts of India. In response to these concerns, the Court clarified that the restriction placed on Theos would not impact its legal rights, including statutory and common law rights, to pursue injunctions against any unauthorized use of identical or similar marks outside of the Delhi-NCR region. This clarification affirmed that Theos retained the legal authority to enforce its trademark rights in broader geographical areas beyond Delhi-NCR if needed.

3. Theos argued that Theobroma's registration of the "THEO" mark should be limited to class 30 (foodstuffs) and should not be allowed to be retained in other classes. The Court provided clarification by stating that the use of the mark "THEO" would be restricted to only the five specific products mentioned in the Court's previous order, regardless of the class under which they fall. This meant that Theobroma could use the mark "THEO" only for those specific products, regardless of any broader class distinctions.

4. Theobroma requested a modification of the Court order to allow it to use the "THEO" mark on both physical menus and QR code menus. Theos, in response, indicated that it had no objections to this modification, provided that it was restricted to menus in physical outlets only.

Based on the terms and agreements reached by both parties and the clarifications provided by the Court, the Court issued a decree and disposed of the suit. 

Case: Theos Food Pvt Ltd & Ors v. Theobroma Foods Pvt Ltd, CS(COMM) 429/2021 and I.A. 11653/2021, 15732/2021.