Delhi High Court says ASUS infringed on an existing trademark for Zen branding.
What you need to know
- An Indian court has restrained ASUS from selling devices that contain Zen branding.
- The court found that a previous brand used the Zen moniker to sell phones and accessories.
- The ruling will go into effect eight weeks from now.
ASUS is set to launch the ZenFone 6 in India, but it may have to navigate a legal hurdle before it can do so. The Delhi High Court has ruled that ASUS infringed on an existing trademark for the word Zen, which means that the Taiwanese manufacturer now has to rebrand its phones in the country.
The complaint was filed by Telecare Network, a local brand that sold phones under the Zen Mobile moniker. Filings revealed that Telecare Network sought the trademark for Zen and ZenMobile back in 2008, with the brand stating that ASUS' ZenFone branding likely to cause "confusion in the minds of the public."
Telecare also stated that ASUS used the Zen moniker to "ride upon its goodwill" that it created in the market. Telecare started selling devices with Zen branding from 2008, with ASUS entering the Indian market in 2014. Although ASUS argued that the word zen itself is a common one that has roots in Buddhism — and pointed out that there are several trademarks with zen in their name — the court sided with Telecare:
…a word may be generic qua a specific business or trade or industry but not across the board for all business or trades or industries.
Consequently, though ZEN is a generic 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 found that by using ZenFone branding, ASUS was acting 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.
As such, ASUS is banned from advertising or using the ZenFone branding for its products, with the ruling going into effect eight weeks from now. The next hearing is scheduled for July 10, where ASUS will be trying to overturn the ruling. If that isn't the case, it will have to come up with new branding.
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