Finally, the parties were able to arrive at an amicable settlement on the following terms:
(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) Theobroma no longer objects to the use of the mark ‘THEOS’/‘THEO’S’ by Theos 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 its use of the mark ‘THEOS’/‘THEO’S’ only for the following five food items offered by it, along with variants being egg/without egg and sized 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 menu cards used at the physical outlets of Theobroma, and shall not extend to online menu cards of Theobroma.
(v) Theos shall also 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 shall be done under a mark/name which is neither 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, 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.
(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) If Theos receives any requests for online supply or deliveries outside the Delhi-NCR region, the same shall be serviced under a different mark and name, as set out in (v) above. The said mark/name shall not be identical or deceptively similar to ‘THEOBROMA’. Theobroma is free to expand its outlets under the mark/name ‘THEOBROMA’ across the country. However, Theos shall be restrained to the Delhi-NCR region, insofar as its goods and services provided under the mark/name ‘THEOS’/‘THEO’S’ is concerned.
(x) There are various disputes pending between the parties before the Registrar of Trademarks, apart from the aforementioned two suits, as also, other cancellation petitions, etc. All the disputes between the parties would stand resolved, in the above terms.
Source: Barandbench
