The Delhi High Court passed an order (read a copy at Bar and Bench) on May 28 that restrained Asus Technology from advertising and selling its products — including laptops, phones and accessories — under the trademarks ZEN, ZENFONE, and other “deceptively similar” trademarks. The case was filed by Telecare Network India Pvt Ltd. The court directed Asus to stop using the trademarks within eight weeks. Asus has a range of mobile phones called ZENFONE and sells laptops under the name ZENBOOK.
Telecare Network claimed that it was the owner of the trademarks ZEN and ZENMOBILE under the Trade Marks Act, 1999, and had been using them for feature phones, smartphones, tablets and accessories since 2008. It claimed that Asus had subsequently adopted a near-identical trademark ZENFONE to sell identical goods within a similar price range. This, Telecare Network claimed, was likely to cause confusion among customers as it suggested that the two were somehow associated. It argued that Asus adopted the ZEN and ZENFONE trademarks to ride on its goodwill and reputation. The company claimed that the essential feature of its trademark was “ZEN” and the addition of the suffix “FONE” was immaterial.
‘ZEN’ is a genetic term, Asus argued
Asus’s counsel said that Jonney Shih, who headed the company, was a staunch believer of the Zen philosophy and that “ZENFONE” was a reflection of this. Asus also said that it had already filed an application for the cancellation of Telecare Network’s registered trademark before the Intellectual Property Appellate Board, New Delhi, and that it was pending adjudication. It claimed that the Trade Marks Registry “clearly reflected” that the marks Telecare Network had registered were not word marks but device/labelmarks. Thus, Asus contended, Telecare network was not entitled to claim exclusivity over them.
Asus also argued that the mark “ZEN” was generic in nature, and said that there were more than 100 marks with that word registered by various companies, including mobile phone firms. It argued that there was no scope for confusion or deception in the minds of consumers as the mark “ZENFONE” was coupled with the well-known brand name ASUS, thereby identifying the source of the products.
What the court said
In its judgement, the court noted that Telecare Network had proved prior use of the marks having used them since 2008, while Asus began using the ZENFONE mark in 2014. It said that though “Zen” was a generic word with respect to Buddhism, it could not be considered a generic mark with respect to mobile phones and other tech products.
“… 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.”
The court said that Asus’s pending application for the cancellation of Telecare Network’s registered trademark did not preclude it from granting an injunction, and concluded that Asus’s adoption of the mark ZEN was in bad faith.