Bombay HC Rejects TikTok’s Plea for ‘Well-Known’ Trademark Status Citing Government Ban

The Bombay High Court recently refused to grant "TikTok" the status of a well-known trademark under the Trade Marks Act while noting that TikTok had been banned by the Indian government owing to national security concerns.

The bench led by Justice Manish Pitale said," ...This Court is of the opinion that the banning of the application of the petitioner i.e. TikTok by the Government of India, while exercising power under the Information Technology Act and Rules, is indeed a relevant fact taken into consideration by the Registrar. It was admitted on behalf of the petitioner that the ban still operates. Merely because the ban on certain other applications has been lifted cannot be a ground for the petitioner to claim that the impugned order is rendered erroneous".

In doing so, the single judge refused to set aside the order passed by the Registrar of Trade Marks, which had refused to recognise “TikTok” as a well-known trademark under Rule 124 of the Trade Mark Rules, 2017.

In its order, the court asserted that under Section 11(6) of the Trade Marks Act, the Registrar has the discretion to consider any relevant fact while deciding if a brand should be declared a well-known trademark. In the present case, the Registrar held that TikTok's ban in India by the Government due to national security, sovereignty, and public order was a valid reason.

Before the High Court, TikTok had moved a petition challenging the order passed by the Registrar of Trade Marks.

It was TikTok's case that the Registrar had wrongly referred to Section 9 (which deals with registrability), instead of the correct Section 11, which deals with well-known marks. TikTok argued that the Registrar merely quoted a government ban and did not apply any legal mind. Furthering the argument, it was contended that the ban in India should not prevent recognition as a well-known mark, particularly when TikTok is global.

While invoking Section 11(9) of the Act, TikTok argued that the law does not require the use of the mark in India to be declared a well-known trademark.

Taking note of these contentions, the court clarified that just because the Registrar cited the wrong section doesn’t diminish the core reasoning of the order. Highlighting that TikTok remains banned in India, the court stressed that such a serious concern cannot be ignored.

“Since the said mark is already a registered trade mark in India, it does enjoy all statutory protection… but in the light of the fact that the application TikTok itself has been banned… no error can be attributed to the Registrar in refusing the application,” the court added.

Accordingly, the court dismissed the petition.

Case Title: TikTok Limited vs Registrar of Trade Marks