Restrictions Of Trade Marks Act,1989 “ASUS” From Using “ZENFONE”.
Restrictions Of Trade Marks Act,1999 “ASUS” From Using “ZENFONE”.
Shambhavi
Anand
BACKGROUND-
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.
CONCLUSION-
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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