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The Delhi High Court has restrained mobile manufacturer Asus Technology Pvt Ltd from selling and advertising mobile phones, accessories, and any other related products under the trademark ZEN, ZENFONE or any other deceptively similar trademark.
The interim order was passed by a Single Judge Bench of Justice Manmohan in a suit for infringement and passing off filed by Telecare Network India Pvt Ltd against Asus.
Telecare Network claimed that it was the registered proprietor of the marks ZEN and ZENMOBILE under the Trade Marks Act, 1999 and had been continuously and extensively using the marks for feature phones, smartphones, tablets and accessories since 2008.
It was the plaintiff’s grievance that Asus had adopted an identical trademark ZENFONE for selling identical goods i.e. mobile phones.
It was further submitted that since both the brands fell with a similar price range, Asus’s mark was likely to cause confusion in the minds of the public that two were somehow associated. Thus, it was argued by the plaintiff that ZEN was adopted by Asus with mala fide intent to ride upon its goodwill and reputation.
Asus, on the other hand, informed the Court that it was spearheaded by Mr Jonney Shih, who was a staunch believer of the ancient Zen Philosophy and that the mark ZENFONE was a reflection of the same.
It was argued that the mark ZEN was common to trade and generic in nature. Relying on a search report conducted on the Trade Marks Registry’s website, it was contended that there were various third-party manufacturers who had got the mark ZEN registered.
Asus also argued that there was no scope of confusion or deception in the minds of the consumers as the mark ZENFONE was coupled with its well-known registered house mark ASUS, thereby identifying the source and origin of their products.
Further, in view of Section 17(2) of the Act, the plaintiff was disentitled from claiming exclusivity/monopoly over a part of the label/device, Asus contended.
After hearing the parties, the Court observed that the rationale behind trademarks and trade names was to ensure that people do not get confused about the source of goods and services.
Coming to the generic nature of the term “Zen”, the Court stated that although it was a generic word qua a school of Buddhism, it could not be said to be a generic mark with regard to mobile phones.
“…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.”
It further added that since the adoption of the mark ZEN by the Plaintiff with respect to mobile phones and tablets had no correlation, it was entitled to protection even without proof of it having acquired secondary significance.
The Court also remarked that mere filing of a search report from the trademark office does not prove that the mark mentioned in the search report was actually being used by third parties.
It was held that since Asus had itself applied for registration of the mark ZENFONE, it could not now be “permitted to approbate and reprobate” and was thus estopped from contending that the mark ZEN was common to trade or generic.
The Court also added that pendency of Asus’ application for cancellation of the plaintiff’s registered trademark did not denude the Court of the power to decide on the grant of an injunction.
Further, a subsequent dishonest user cannot take shelter under Section 17(2) and use it as a license to commit an act of passing off, it said.
Examining the facts of the case, the Court noted that the plaintiff had proved prior use since 2008 as compared to Asus, which began using an identical/deceptively similar mark ZENFONE in 2014.
It also recorded that the plaintiff expended large sums of money in promotion of its products and even engaged Bollywood actor Amitabh Bachchan as its brand ambassador in 2010. It showed that the plaintiff had acquired significant goodwill and reputation with regard to its products sold under the mark ZEN prior to the defendants entering the market, the Court inferred.
The Court thus concluded that Asus’ adoption of the mark ZEN was in bad faith.
“..the triple identity test is satisfied as the defendants have made use of a deceptively similar/identical trademark(ZENFONE) in relation to identical goods (mobile phones) having identical trade channels…the defendants having adopted a deceptively similar mark wherein the dominant part of the defendant’s mark ZENFONE is the plaintiff’s mark ZEN, for the same product i.e. mobile phones, shows prima facie that there is a likelihood of confusion and damage to the plaintiff’s goodwill.”
Accordingly, the Court restrained Asus from directly or indirectly 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.
The plaintiff company was represented by Advocates Mudit Sharma and Parvez Alam Khan who were instructed by Mint Law Associates.
Asus was represented by Senior Advocate Sandeep Sethi with Advocates Daksh Kumar and Sumit R Sharma, instructed by Kochhar and Co.
The matter will be heard next on July 10.
Read the Judgment: