The Bombay High Court recently upheld the Trade Marks Registrar’s decision to deny the inclusion of TikTok in the list of “well-known” trademarks under Rule 124 of the Trade Marks Rules, 2017. .The Court held that the ban imposed by the Government of India on the TikTok app over national security concerns was a relevant factor justifying the Registrar’s refusal.Justice Manish Pitale pronounced the verdict in a petition filed by TikTok Limited through its attorney Faheem Ahmad. The Court found no fault with the Registrar’s reliance on the ban, noting that the Trade Marks Act allowed consideration of “any fact” deemed relevant for determining whether a mark qualifies as well-known..“These are serious matters, which cannot be ignored,” the Court observed, referring to the ban on TikTok citing threats to the sovereignty and integrity of India, defence and public order..TikTok had approached the High Court challenging the Registrar’s October 31, 2023 order that denied its application under Rule 124 for inclusion in the list of well-known trademarks. While TikTok is already a registered mark in India, it sought the enhanced statutory protection granted to marks recognised as “well-known.”The petitioner argued that the order was vitiated by non-application of mind and legal error. It was alleged that the Registrar erroneously referred to Section 9 of the Trade Marks Act—which relates to absolute grounds for refusal of registration—when only Section 11 (relative grounds and recognition of well-known marks) was relevant.TikTok submitted that the Registrar’s reasoning was based entirely on news reports and press releases concerning the ban, and failed to consider the statutory factors laid out under Section 11(6) to (9). It argued that the provisions include criteria such as the recognition of the mark among relevant sections of the public, duration and extent of use, and history of enforcement actions.It also cited Section 11(9), which clarifies that actual use or registration in India is not a pre-condition for determining whether a mark is well-known. Thus, the fact that TikTok was banned and no longer in use should not have weighed against it..Justice Pitale held that while the Registrar’s reasoning could have been more precise in citing applicable statutory provisions, the core rationale could not be faulted. The Court observed that the Registrar had referred to “press material” and official actions under the Information Technology Act, as well as allegations regarding misuse of data, morphed images, and cyberbullying..It further reiterated that the powers under Section 11(6) permit the Registrar to consider any fact deemed relevant, and the inclusion of TikTok’s trade mark in the well-known list would afford it enhanced protection, despite the app being prohibited in India.“Since the said mark is already a registered trade mark in India, it does enjoy all statutory protection… but inclusion in the list of well known marks obviously gives added protection,” the Court noted.However, in light of the continuing ban, which has not been set aside by any competent authority or court, the High Court concluded that the Registrar acted within the bounds of law in refusing TikTok’s request..Tik Tok was represented by Advocates Swati Mittal, Manisha Singh, Abhai Pandey, Anju Agrawal, Gautam Kumar, Ritika Agrawal, Paulome Mehta, Shubhankar Sharma and Ishvendra Tiwari, instructed by Sonal Doshi & Co..The Registrar of Trademarks was represented by Advocates Yashodeep Deshmukh, Leena Patil and V Deshmukh..Read Judgment
