$~7

*

IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of decision: 29^thJuly, 2022

+

CS(COMM) 429/2021 & I.A. 11653/2021, 15732/2021

THEOS FOOD PVT. LTD. & ORS.

..... Plaintiffs

Through:

Mr. Jayant Mehta, Sr. Advocate with

Mr.

Kapil

Wadhwa,

Ms.

Surya

Rajattan and Mr. Abhishek Tiwari,

Mr.

Srikar,

Advocates.

(M:9891929028) along with Plaintiff

No.3 - Mr. Gaurav Wadhwa and

Plaintiff No.4 - Mr. Vikram Narula.

versus

THEOBROMA FOODS PVT. LTD.

..... Defendant

Through:

Mr. Rahul Vidhani and Mr. Manoj

Menda, Advocates. (M:9811545888)

along with Ms. Kamal Messman.

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh(Oral)

1.

The dispute, in the present case, relates to two marks being

‘THEOBROMA’ and ‘THEOS’/‘THEO’S’ used in respect of bakery

related products, patisseries, confectionery etc. The competing entities are

the Plaintiff Nos.1 and 2 being ‘THEOS FOOD PVT. LTD.’ as also

‘THEOS PATISSERIE & CHOCOLATARIE’ (hereinafter, ‘Theos’), which

are based out of Delhi and Noida, and the Defendant being ‘THEOBROMA

FOODS PVT. LTD.’ (hereinafter, ‘Theobroma’), which is based out of

Mumbai, Maharashtra.

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002918

2.

There are two proceedings pending between the parties. The said two

proceedings are as under:

i.

Commercial IP Suit No.342 of 2016 titled “Theobroma

Foods Pvt. Ltd. v. Mr. Karan Narula and Ors.” pending

before the Bombay High Court;

ii.

Present suit being CS(COMM) 429/2021 titled “Theos Food

Pvt. Ltd. & Ors. v. Theobroma Foods Pvt. Ltd.”

3.

In the suit being Commercial IP Suit No.342 of 2016 filed by

Theobroma before the Bombay High Court, an injunction has been sought,

restraining Theos from using the marks ‘THEOBROMA’, ‘Theobroma’,

‘theobroma’, ‘theo’, ‘Theo’, ‘Theo’s’, ‘Theos’ and various other variants

and derivatives thereof, as also, any other mark which is identical or

deceptively similar to Theobroma’s marks. No interim relief was granted in

the said suit. The said suit is pending.

4.

In the present suit before this Court, Theos seeks permanent

injunction restraining Theobroma from infringing the trademark ‘THEOS’,

‘THEO’S’ and ‘THEO’S PATISSERIE & CHOCOLATARIE’, passing off,

unfair competition, dilution, blurring, damages, rendition of accounts, and

delivery up, and other reliefs. The case of Theos is that Theobroma is using

the mark ‘THEOS’ as a prefix to the names of various food items being sold

in the outlets of Theobroma.

5.

A perusal of the court record in the present suit, as also, the amended

Plaint filed before the Bombay High Court shows that Theobroma claims to

be a leading name in the business of manufacturing and selling gourmet

foods,

including

bakery

and

confectionary

products

and

beverages

including, inter alia, cakes, brownies, desserts, pastries, and chocolates.

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002918

Theobroma also claims to be the prior adopter and user of the impugned

marks. In the year 2004, Theobroma opened its first retail outlet/café next to

Cusrow Baug at the iconic Colaba Causeway, Mumbai, under the mark and

name ‘THEOBROMA Food of the Gods’. Since then, over the years,

Theobroma’s trademarks, are stated to have acquired immense goodwill and

reputation and Theobroma is stated to have become a household name. It has

expanded all across India, with a total of 81 retail outlets/cafés at Mumbai,

New Delhi, Pune, Noida, Bengaluru, amongst others. As set out in the

Written Statement, Theobroma has obtained several trademark registrations

in respect of the mark ‘THEOBROMA’ and its variants, some of which are

set out below:

S.No.

Trademark

App/Reg.

No.

Status

Class

1.

THEOBROMA

1315545

Registered

30

2.

1520677

Registered

30

3.

2291823

Registered

30

4.

2301544

Registered

30

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002918

5.

THEOS

2325888

Opposed

by

Plaintiff

No.4 -Mr.

Karan

Narula

43

6.

3503532

Registered

29

6.

On the other hand, Theos is engaged in the business of providing

restauran