Trademark Infringement

Source: Delhi High Court

Why in News?

Justice Prathiba M Singh observed 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.

• Delhi High Court gave this observation in the case of THEOS Food Pvt. Ltd. & Ors. V. THEOBROMA Food Pvt. Ltd.

What is the Background of THEOS Food Pvt. Ltd. & Ors. V. THEOBROMA Food Pvt. Ltd Case?

• The dispute in the present case relates to trademarks infringement of similar names that are, “THEOBROMA” and “THEOS” / “THEO'S”, used in respect of bakery-related products, patisseries, confectionery, etc.
• Plaintiff Nos. l and 2 being ‘THEOS FOOD PVT. LTD.’ as also ‘THEOS PATISSERIE & CHOCOLATARIE’ are based out of Delhi and Noida.
• The Defendant, being 'THEOBROMA FOODS PVT. LTD.' is based out of Mumbai.

What were the Court’s Observations?

• Delhi HC observed that THEO’S 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”.

What is a Trademark Infringement?

• About:
  • A trademark serves as a unique identifier for goods and services, representing the brand and its reputation.
  • Infringement of trademarks not only undermines the value of intellectual property but also poses a threat to businesses by allowing unauthorized parties to benefit from the goodwill associated with a brand.
• Legal Framework:
  • India has a comprehensive legal framework to protect trademarks, primarily governed by the Trademarks Act, 1999.
  • The act defines a trademark as a mark capable of being represented graphically and distinguishing the goods or services of one person from those of others.
  • Trademarks can include names, logos, symbols, and even shapes.
• Infringement under the Act:
  • Direct or registered trademark infringement is mentioned under Section 29 of the Trademarks Act, 1999.
    • It outlines the various acts that constitute infringement, including using a trademark that is identical or deceptively similar to a registered mark in the course of trade.
• Remedies:
  • Civil Remedies: A trademark owner can seek injunctions, damages and accounts of profits.
  • Criminal Remedies: In cases of willful infringement, the court can impose imprisonment for a term not less than six months and extendable to three years along with fine that is not less than Rs 50,000 that may extend to Rs 2 lakh.
  • Customs Enforcement: The Customs Act empowers customs authorities to prohibit the import or export of goods infringing trademarks. This helps in preventing the cross-border movement of counterfeit goods.