News & Updates

June 13, 2019

Interim Injunction Granted Against Asus Technology’s use of ZEN for mobile phones

In the matter of Teleecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd. and Ors. [CS (COMM) 731/2017], the Delhi High Court, in its order of May 28, 2019 granted an interim injunction restraining mobile manufacturer Asus Technology Pvt. Ltd. from selling and advertising mobile phones and mobile accessories under the trademarks ZEN and ZENFONE.

The Plaintiff filed a suit for infringement of its registered trademarks

 as well as for passing off. The Plaintiff claimed to have been using the marks ZEN and ZEN MOBILE since 2008 for its mobile phones, smart phones, tablets and accessories. It was alleged that the Defendants subsequently, in 2014, adopted a deceptively similar mark for their mobile phones.  

The Defendants argued that ZEN was commonly used in the trade, placing reliance on multiple third-party registrations featuring ZEN in class 9. The Defendants also pointed out that the Plaintiff had itself admitted (in a response filed during the prosecution of its trademark application) before the Trademarks Registry that the word ZEN is generic and that no one could claim exclusive rights over it.

The Court observed “…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… Consequently, the adoption of the mark ZEN by the Plaintiff with respect to mobile phones and tablets, with which it has no correlation, is arbitrary.”  

On the Plaintiff’s allegedly having admitted genericity of the mark, the Court was of the view that “Once a mark is registered, the certificate of registration has to be seen as it is. Post grant of registration of the mark ZEN, neither the Examination Report … nor the plaintiff’s reply are relevant documents.” Taking a prima facie view that the Defendant’s adoption was in bad faith, the Court granted the Plaintiff an interim injunction.

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