Delhi High Court issued an interim order restraining Asus from selling it smartphones which have the ‘Zen’ branding in India for eight weeks starting May 28, 2019. The order would force Asus to pause the sale of its ZenFone range of smartphones across the country.
The development was first reported by Bar & Bench, which said the interim order was passed by a Single Judge Bench of Justice Manmohan after Asus was found infringing the ‘Zen’ trademark. The Zen trademark was filed for use by Telecare Network India Pvt Ltd back in 2008 for its own range of feature phones, smartphones, tablets and accessories. On the other hand, Asus launched its ZenFone series of Android smartphones in the Indian market in 2014.
Meanwhile, Asus has issued a statement, “The ASUS legal team is currently working with the Delhi High Court in India to resolve the Zen Mobiles and ZenFone trademark lawsuit. The supply of ASUS smartphones, notebooks and other products, as well as technical support and after-sales service for all ASUS products remain unchanged for all consumers.”
Later on, Asus also introduced the ZenBook series of ultrabooks running on Windows 10. Asus’s ‘Zen’ mark was likely to cause confusion in the minds of general users that two brands were associated with each other.
The Delhi High Court in its order opined that “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. Consequently, the defendants having adopted a deceptively similar mark wherein the dominant part of the defendants‟ 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.”
In its defence, Asus said that it was spearheaded by Jonney Shih, who was a staunch believer of the ancient “Zen Philosophy” and that the ZenFone trademark was a reflection of the same. The counsel of the defendants also contended that the mark Zen was common to trade and generic in nature. Pointing out 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 had also argued that there was no scope of confusion for the consumers as the mark ZenFone was paired with its well-known Asus mark, and therefore it will be identifying the source of their products. However, Telecare Network argued that similar types of names can cause confusion in the consumers’ mind.
However, it must be noted that the Delhi High Court’s order is interim and Asus can go back to the court with a valid argument or solution to get the ban lifted.