The Delhi High Court has passed a new order restraining the Taiwanese manufacturer Asus Technology from selling and advertising its phone, accessories or any other product under the trademark ZEN or ZENFONE, or any other deceptively similar trademark. The Single Judge Bench of Justice Manmohan passed this interim order following a suit for infringement filed by Telecare Network India Pvt Ltd against Asus. In the filing, Telecare Network India Pvt Ltd stated that it was the registered proprietor of the marks ZEN and ZENMOBILE under the Trade Marks Act, 1999. The company also said that it had been using the trademarks for feature phones, smartphones and tablets since 2008.
Original Owner of ZEN Trademark Before 2008 - Telecare Networks
The plaintiff said that Asus had adopted a similar moniker of ZENFONE to sell a competent product, i.e. smartphone in the market. The filing also stated that since the pricing of the products from both the companies was similar, it was bound to confuse the minds of the public that these two were somehow associated. Thus the plaintiff argued that Asus adopted ZEN with mala fide intent to ride upon its goodwill and reputation. To this, Asus had replied in the court that the company was spearheaded by Mr Jonney Shih, who is a big believer of the ZEN philosophy and that the ZEN mark was the symbolism for that. The company also argued that the mark ZEN was common to trade and “generic” in nature.
Although Asus claimed that there was no scope for confusion, the court observed that the reason behind trademarks and trade names was to ensure that people do not get confused between the source of goods and services. As for the generic terminology as claimed by Asus, Delhi High Court bench said that although the term ZEN was generic in the school of Buddhism, it wasn’t the case with regards to mobile phones. This news was first reported by barandbench.
Asus Started Using ZEN Moniker in 2014
The court said, “…a word may be generic qua a specific business or trade or industry but not across the board for all business or trades or industries. Consequently, though ZEN is a generic word qua a school of Buddhism, yet it is not a generic mark with regard to mobile phones and tablets as the said word has no connection or correlation with mobile phones or tablets.”
After examining the facts of the case, the bench concluded that the plaintiff had been using the mark ZEN before 2008 as compared to Asus, which began using an identical or deceptively similar mark ZENFONE in 2014. It was also concluded that the plaintiff had spent large sums of money in promotion and advertisement of its products and even engaged Bollywood actor Amitabh Bachchan as its brand ambassador in 2010. This proved that Telecare Network had significant goodwill in the market before the use of ZEN mark by Asus.
On these lines, the court barred Asus from selling offering and advertising for sale mobile phones and/or mobile accessories and/or any other related products or any other goods under the trademark ZEN, ZENFONE and/or any other trademark identical and/or deceptively similar to the trademark ZEN and ZEN Mobile, after eight weeks starting May 28.
