Delhi court blocks Asus from using ‘Zen’ marks
An Indian court has issued an injunction restraining Taiwanese technology company Asus from using the ‘Zen’ and ‘Zenfone’ trademarks after a passing off suit brought by a local mobile phone manufacturer.
In the judgment, issued May 28, the Delhi High Court ruled that there was a likelihood of confusion between Asus’ use of the marks and that of Teleecare Network, which sued Asus in 2017.
The Delhi court ruled that “after eight weeks”, Asus would be strained from selling mobile phones and related products under the “Zen”, “Zenfone”, and other similar marks.
Teleecare registered the “Zen” and “Zen Mobile” marks in 2016 in classes 9, 21, and 36. According to the company, it has been continuously and extensively using the marks commercially for tablets, mobile phones and related accessories since 2008.
The Indian company accused Asus of adopting a nearly identical “Zenfone” mark for mobile phones. According to Teleecare, the “fone” suffix was “immaterial” as the “Zen” component of the mark was identical to its own prior registered marks.
Asus had argued that “Zen” was common to trade and generic in nature, citing more than 100 Indian trademarks for mobile phones with “Zen” as an element.
Teleecare’s marks then needed to have acquired secondary significance in order to enjoy exclusivity, Asus argued.
The Delhi High Court, however, ruled that although “Zen” was a generic phrase in the context of Buddhism, it had no particular connection with the relevant goods and services.
The court also said that a search of the trademark registry did not prove actual use of multiple third-party “Zen” marks cited by Asus.
According to the judgment, Teleecare’s marks had acquired “significant goodwill” owing to the company’s investment in advertising and promotion of its products. Asus’ subsequent adoption of the mark was in “bad faith”, the court said.
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