'Zen Not A Generic Word In Relation To Mobiles' ; Delhi HC Restrains Asus From Using 'Zen' 'Zenfone' In Their Products [Read Interim Order]

The Delhi High Court has passed an interim order restraining mobile and laptop manufacturing company Asus Technology from using the mark "ZEN", "ZENFONE" and other similar terms while selling mobile phones and other products. 

Justice Manmohan passed the order in a suit filed by Telecare Network India Pvt Ltd, which claimed to have been continuously using the mark ZEN and ZEN MOBILE for feature phones, tablets, smart phones and other accessories since 2008. It argued that the defendant Asus had subsequently adopted an identical trademark ZENFONE which is deceptively similar to the plaintiff's. They pointed out that the essential feature of the defendants trademark was ZEN and the additional suffix FONE is immaterial.

The plaintiff further contended that defendants use of 'Zen' in their products is likely to create confusion in customer's mind which is a malafide intend to ride upon the goodwill and reputation of the plaintiff. In support of this argument they relied on Heinz Italia & Anr. V. Dabur India Ltd., (2007) 6 SCC 1, where Apex Court observed that 'the passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody else'.

The defendant submitted that they used the word ZEN because they are believer of ancient 'Zen Philosophy' and they have already filed an application for cancellation of the plaintiff's registered trademark which is pending in Intellectual Property Appellate Board. But on this argument the court stated that mere pending of cancellation proceedings is not a bar against Court exercising its jurisdiction.

Further Asus stated that plaintiff was disentitled from claiming the monopoly over a part of label or device under the Section 17(2) of the Trade Marks Act, 1999. But the court opined that this section "relates to a composite registered trade mark and the circumstances under which exclusive rights can be claimed in part of a registered mark". [Registrar of Trademarks Vs. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558 and Bhole Baba Milk Food Industries Ltd. vs. Parul Food Specialties Pvt. Ltd]

On the matter of section 17(2), the High Court took a wide view and observed that by filing an action for passing off to claim the exclusivity, the party can overcome the bar.

The High Court observed that "it is necessary to first appreciate that the rationale behind grant of recognition and protection of trademarks and trade names is to ensure that people don't get confused about the source of goods and services. To put it tersely, a trademark is a source identifier". 

The court gave the wide view on the generic mark and held that "ZEN is a genric 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 also observed that Asus' adoption of the mark ZEN prima facie appeared to be 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."

The court has restrained Asus Technology from directly or indirectly selling, offering and advertising for sale mobile phones, mobile accessories or any other related products under the trademark ZEN, ZENFONE and any other trademark identical or deceptively similar to the trademark ZEN and ZEN Mobile.

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