Back
IN THE HIGH COURT OF DELHI
Manmohan, J.
Teleecare Network India Private Limited -Appellant
Vs.
Asus Technology Private Limited And Others -Respondent
Civil Suit (Comm) No. 731 of 2017; Civil Contempt Petition No. 42 of 2015; Interlocutory Application No. 7941 of 2015, 12833 of 2015, 5022 of 2016, 2248 of 2018, 5770 of 2018, 13477 of 2018
Decided On : 28-05-2019
TRADEMARK - Infringement, Passing Off - Trade Marks Act, 1999 - Section 17(2), Section 11 - The court discussed the legal framework of trademarks, including the categorization of trademarks, the distinction between generic, descriptive, suggestive, arbitrary, and fanciful marks, and the protection of trademarks as a source identifier. The court emphasized that a word may be generic in one context but not in another, and that a subsequent user cannot take shelter under Section 17(2) of the Trade Marks Act, 1999 to commit passing off. The court found that the plaintiff, being the prior user of the mark ZEN since 2008, had acquired significant goodwill and reputation, and that the defendants' adoption of the mark ZENFONE was in bad faith. The court concluded that the defendants' use of a deceptively similar mark for identical goods created a likelihood of confusion and damage to the plaintiff's goodwill, satisfying the test of passing off as stipulated in Heinz Italia &Anr. Vs. Dabur India Ltd., (2007) 6 SCC 1.
Fact of the Case:
The plaintiff filed a suit for infringement, permanent and mandatory injunction, passing off, delivery up, and damages, claiming that the defendants had adopted an identical trademark ZENFONE to that of the plaintiff's mark ZEN and ZENMOBILE for selling identical goods, i.e., mobile phones. The plaintiff contended that it was the prior user of the marks ZEN and ZENMOBILE and had acquired significant goodwill and reputation since 2008. The defendants argued that the mark ZEN was common to trade and generic in nature, and that the plaintiff's registration of the mark ZEN was for label/device marks, disentitling it from claiming exclusivity over the word ZEN.
Finding of the Court:
The court found that the plaintiff, being the prior user of the mark ZEN since 2008, had acquired significant goodwill and reputation, and that the defendants' adoption of the mark ZENFONE was in bad faith. The court concluded that the defendants' use of a deceptively similar mark for identical goods created a likelihood of confusion and damage to the plaintiff's goodwill, satisfying the test of passing off as stipulated in Heinz Italia &Anr. Vs. Dabur India Ltd., (2007) 6 SCC 1.
Issues: The issues involved in the case included the determination of the distinctiveness of the mark ZEN, the prior use of the mark by the plaintiff, the defendants' application for cancellation of the plaintiff's registered trademark, and the defendants' argument of the mark being common to trade and generic in nature.
Ratio Decidendi: The court's decision was based on the finding that the plaintiff, being the prior user of the mark ZEN since 2008, had acquired significant goodwill and reputation, and that the defendants' adoption of the mark ZENFONE was in bad faith. The court concluded that the defendants' use of a deceptively similar mark for identical goods created a likelihood of confusion and damage to the plaintiff's goodwill, satisfying the test of passing off as stipulated in Heinz Italia &Anr. Vs. Dabur India Ltd., (2007) 6 SCC 1.
Final Decision: The court restrained the defendants from directly or indirectly selling, offering, and advertising for sale mobile phones and/or mobile accessories and/or any other related products or any other goods under the trademark ZEN, ZENFONE and/or any other trademark identical and/or deceptively similar to the trademark ZEN and ZEN Mobile, in any manner whatsoever.
JUDGMENT :
Manmohan, J.
I.As. 969//2015 & 5129/2018
1. The present suit has been filed for infringement, permanent and mandatory injunction, passing off, delivery up and damages. The prayer clause in the present suit is reproduced hereinbelow:-
"In the light of aforementioned facts and circumstances of the case it is most respectfully prayed that this Hon'ble court may be pleased to:
i. Pass a decree of permanent injunction restraining the Defendants, their partners, principal officers, servants, agents and representatives from selling, agents and representatives from selling, offering and advertising for sale mobile phones and/or mobile accessories and/or any other goods whatsoever under the trademark "ZENFONE" and/or any other trademark identical and/or deceptively similar to the trademark "ZEN" and "ZEN MOBILE" which amounts to infringement of the Plaintiff's aforesaid marks ZEN and ZEN MOBILE.
ii. Pass a decree of permanent injunction restraining the defendants, their partners, principal officers, servants, agents and representatives from selling, offering and advertising for sale the mobile phones or mobile accessories under the trademark "ZENFONE" or any other trademark identical and/or deceptively similar to the trademark "ZEN" and "ZEN MOBILE" amounting to passing off of the goods and business of the Defendants as and for those of the Plaintiff Company.
iii. Pass a decree against the Defendants, their partners or affiliates, as the case may be, their officers, servants, agents, representatives, distributors or assigns be ordered to withdraw all the mobile phones and/or mobile accessories from all the markets under the trademark "ZENFONE".
iv. Pass a decree towards damages caused to the Plaintiffs by the Defendants to the tune of Rs.1,00,00,000/- jointly and/or severally.
v. Costs of the suit be awarded to the Plaintiff and
vi. Any other relief which the Hon'ble Court thinks fit and proper in the circumstances in favour of the Plaintiff and against the Defendant."
2. Ias. 969/2015 and 5129/2018 have been filed for ad interim injunction by the plaintiff.
PLAINTIFF'S ARGUMENTS
3. Mr. Mudit Sharma, learned counsel for the plaintiff stated that the present suit is a suit for infringement of registered trade mark as well as for passing off.
4. He contended that as on 13th June, 2016, the plaintiff's TM Applications Nos. 1733503, 2738947, 2738949, 2746230 and 2746229 were allowed and the plaintiff became the registered proprietor of the marks ZEN and ZENMOBILE under Classes 09, 21 and 36 of the Trade Marks Act, 1999.He submitted that the trademarks ZEN and ZEN MOBILE are arbitrary and coined words which have no relation to the business of mobile phones and accordingly are not descriptive marks.
5. Learned counsel for the plaintiff further stated that the plaintiff was prior user and had been continuously and extensively using the marks ZEN and ZEN MOBILE for feature phones, smart phones, tablets and accessories since 2008. He contended that the defendants had subsequently adopted an identical trade mark ZENFONE to that of the plaintiff's mark ZEN and ZENMOBILE for selling identical goods i.e. mobile phones. He pointed out that the essential feature of the defendants' trademark was ZEN and the addition of the word FONE as a suffix was immaterial.
6. Learned counsel for the plaintiff stated that the sale turnover of the plaintiff in 2015-2016was Rs.6,17,35,00,000/- and the plaintiff incurred an advertisement expenditure of Rs. 10,19,00,000/- in 2016-2017. He pointed out that while Mr. Amitabh Bachchan had been the plaintiff's brand ambassador since 27th May, 2010, the defendants' first advertisement had been published four years later in the newspapers on 10th July, 2014. A pictorial representation of the plaintiff's and defendants' advertisements is reproduced hereinbelow:-
Plaintiff's Advertisement
IMAGE
Defendants' Advertisement
IMAGE
7. Learned counsel for the plaintiff further contended that while the price range of the plaintiff's products wa
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
