The Delhi High Court has barred Asus from selling or advertising its ZenFone lineup of smartphones or any other product with Zen branding in India for allegedly infringing on an existing trademark for the word Zen owned by Telecare Network India Pvt Ltd. Telecare has alleged that it holds the rights to the marks Zen and Zenmobile under the Trade Marks Act, 1999 and has been selling feature phones, smartphones, tablets and accessories under the branding since 2008 - Asus started selling ZenFones in India only in 2014.
The complainant has argued since both the companies have been selling mobile phones in and around the same price range, Asus’ use of the Zen branding was likely to cause confusion among buyers. It has further alleged that Asus has been using the Zen branding with mala fide intent to ride upon its goodwill and reputation - Telecare had acquired the said good will even before Asus had formally arrived in the country. Spending large sums of money in promotions that included signing Bollywood actor Amitabh Bachchan as brand ambassador in 2010.
In its defense, Asus said the word Zen was generic in nature but because it had itself applied for registration of the mark Zenfone, the court turned down the argument.
“..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 ruling will come into effect after eight weeks starting May 28. The next hearing is scheduled for July 10 wherein Asus will try to overturn the ruling. Asus has been gearing to launch the ZenFone 6 in India in the days to come – Asus has already started teasing the product across various channels, including Flipkart which is its official partner for selling its ZenFones in India. Whether or not the launch is affected by the ruling is something only time will tell.
For now, here's what Asus is saying about the Delhi High Court ruling:
"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," an Asus spokesperson said in statement given out to Republic World.