Asus ZenFone case: Delhi HC banning use of 'Zen' is correct, as trademark for Zen branded phones belongs to Telecare Network

Telecare Network used the Zen trademark since 2008, while Asus started using an identical/deceptively similar mark ZenFone from 2014.

The Delhi High Court has restrained Asus from using Zen for branding its products because the similar trademark belongs to Telecare Network India Pvt Ltd. The court ordered that the rationale behind granting recognition and protection of trademarks and trade names was to ensure that people didn’t get confused about the source of goods and services.

The court was of the view that the word Zen might be generic for a specific business or trade or industry. Though Zen is a generic word — in reference to Buddhism — it isn’t a generic trademark as far as mobile phones and tablets are concerned.

Asus Zenfone 6 launch poster. Image: Asus

Asus Zenfone 6 launch poster. Image: Asus

Rajas Pinglel, an advocate and expert on IPR law from Pune, said, “The court’s order is correct. Zen is a generic word. But, it isn’t generic when referred to Zen mobile. Customers are confused over who owns Zen — Asus or Telecare India? The Chinese and Taiwanese giants do a lot of businesses in India, but they have to be in accordance with the law of the land. One cannot use other’s intellectual property to make commercial gains.”

Telecare Network used the Zen trademark since 2008, while Asus started using an identical/deceptively similar mark ZenFone from 2014.

Telecare Network’s annual sales figure for 2015-16 was Rs 617 crore, and its advertisement expenses were Rs 10 crore for 2016-17. The ad spend shows that the company pumped in money to promote its products. Bollywood legend Amitabh Bachchan was Telecare Network’s brand ambassador as on 27 May, 2010. On the contrary, Asus put out its first ZenFone advertisement in 2014.

To be sure, Telecare Network acquired significant goodwill and reputation for its products sold under the Zen trademark prior to Asus joining the competition.

DK Dubey, managing partner, DK Dubey & Associates said, “There may have been an understanding between the two companies over the use of ‘Zen’ trademark. And, both these companies can share the spoils. Many firms are aware of the trademark, but many aren’t. Asus has to take Telecare India Pvt Ltd’s consent to market its products.”

(Also read: ASUS Zenfone 6 First Impressions: Unique camera module, looks ready to take on the OnePlus 7)

The Delhi HC has ruled that eight weeks after the judgment, or from 28 May onwards, Asus or its partners, agents, employees cannot use Zen, ZenFone trademark for directly or indirectly selling, offering and advertising for sale mobile phones and/or mobile accessories and/or any other related products.

In the meantime, Asus which has a phone launch scheduled on 19 June, has decided to rename its upcoming phone Asus 6Z instead of the original ZenFone 6. The team appears to have taken the High Court judgement in their stride quite quickly as the renewed launch date happens to be just three days after the originally scheduled launch date.

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