Restrictions Of Trade Marks Act,1999 “ASUS” From Using “ZENFONE”.
ASUS is a Taiwan-based multinational computer hardware and consumer electronics company that was established in 1989. ASUS is the world’s number one motherboard and gaming brand as well as top-three consumer notebook vendor. It is dedicated to creating products for today’s and tomorrow’s smart life.
Today, the company is pioneering new mobile trends with the ASUS ZenFone series, and it is rapidly developing virtual and augmented reality products as well as IOT devices and robotics technologies. Recently, ASUS introduced Zenbo, a smart home robot designed to provide assistance, entertainment and companionship to families. Fortune Magazine recognised ASUS as one of the world’s most admired companies, in 2015 and 2016. From the past four years ASUS has been ranked Taiwan’s most valuable international brand, by Interbrand.
Telecare Network India Private Limited is the manufacturer of Samsung S6 Mobile Phone, Zen mobile p48 and Zen mobile in New Delhi. It filed a case against ASUS claiming that it was the owner of the trademarks ZEN and ZENMOBILE under the Trade Marks Act, 1999, and had been using them for feature phones, smartphones, tablets, and accessories since 2008.
THE TRADE MARKS ACT, 1999-
The Trade Marks Act, 1999 has a wide scope. The main pointers which need to be highlighted in the present case require stating the following-
1. A Trade mark includes reference to “collective mark” or “certification trade mark”.
2. Section 1(a) of the Trade Marks Act, 1999 includes the registration of trademark and clause 9 includes registration of parts of marks.
3. Section 1(j) of the Trade Marks Act, 1999 includes prohibiting the use of someone else’s trademarks as a part of corporate names or names of business concern.
4. Section 15 of the Trade Marks Act, 1999 is related to registration of parts of trademarks and of trademarks as a series. Furthermore in the same section it is stated that, where the proprietor of a trademark claims to be entitled to the exclusive use of any part there of separately, he may apply to register the whole and the part as separate trade mark.
5. Section 17 is another relation which states the effects of registration of parts of a mark.
The above points are the one which provide the base for the case which is filed by Telecare Network against ASUS relating the trademarks ZEN and ZENMOBILE.
THE CURRENT ISSUE-
ASUS has a range of mobile phones called ZENFONE and sells laptops under the name ZENBOOK. Telecare Network India Private Limited filed a case against ASUS under the Trade Marks Act, 1999.
Telecare Network claimed that it was the owner of the trademarks ZEN and ZENMOBILE under the Trade Marks Act, 1999. It claimed that ASUS had subsequently adopted a nearly identical trademark to sell a competent product in the market. According to Telecare, ASUS had adopted ZEN with a mala fide intention to ride upon its goodwill and reputation, which was supported by stating the similarity in prices of the products which was bound to confuse the minds of the public that these two were somehow associated. It also claimed that essential feature of its trademark was “ZEN” and the addition of the suffix “FONE” was immaterial.
To this ASUS put forward that the mark ZEN was common to trade and “generic” in nature and claimed that there was no scope for confusion as the mark “ZENFONE” was coupled with the well-known brand name ASUS, thereby identifying the source of the products. It also said that it had already filed an application for the cancellation of Telecare Network’s registered trademark before the Intellectual Property Appellate board, New Delhi and it was pending adjudication. It claimed that the Trade marks Registry “clearly reflected” that the marks Telecare Network had registered were not word marks but device or labelmarks.
The court said though the word ZEN may be generic qua a specific business or trade or industry but not across the board for all business or trade or industry. Yet being a generic word qua a school of Buddhism but it is not a generic mark with regard to mobiles and tablets as it has no connection or correlation with mobiles or tablets. The Delhi High Court passed an order on May 28 that restrained ASUS Technology from advertising and selling its products- including laptops, phones and accessories- under the trademarks ZEN,ZENFONE, and other “deceptively similar” trademarks. The single judge bench of Justice Manmohan passed this interim order.
In its judgement, the court noted that Telecare network had proved prior use of the marks having used them since 2008, while ASUS began using the ZENFONE mark in 2014. It said that though “Zen” was a generic word with respect to Buddhism but it could not be a generic mark with respect to mobile phones and other tech products.
The court also said that ASUS’s pending application for the cancellation of Telecare Network’s registered trademark did not preclude it from granting an injunction, and concluded that ASUS’s adoption of the mark “Zen” was in bad faith.
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