TikTok vs Trademark Registrar: Court Upholds Refusal of Well-Known Mark Status

Background:

In this case, the petitioner owner of the popular short-video app TikTok approached the Registrar of Trade Marks with a request to declare their trademark "TikTok" as a well-known mark given in Rule 124 of the Trade Marks Rules, 2017. However, the Registrar turned down this request. Challenging that decision, the petitioner moved the court, arguing that the refusal was legally unjustified.

Legal Framework Involved:

Several important provisions of the Trade Marks Act, 1999 were central to the dispute.

• Section 11(6):
  This clause outlines various factors that may help in deciding whether a trademark qualifies as “well-known.” These include how well the public recognizes the mark, how extensively it has been used or promoted, and whether it has previously been enforced or protected successfully. Importantly, these are not rigid requirements—the section makes it clear that these are indicative and not a fixed checklist.
• Section 11(7):
  Describes additional circumstances the Registrar should consider while applying Section 11(6), offering further flexibility to the Registrar in decision-making.
• Section 11(8): It means that if a Court or the Registrar has already declared a trademark as well-known, then it must be accepted as a well-known mark everywhere under the law.
• Section 11(9):
  Makes it clear that certain things cannot be insisted upon by the Registrar as a pre-condition to determine well-known status. These include:
• Whether or not the trademark has been used in India;
• Whether the trademark has been registered in India;
• Whether the application for registration has been filed in India or any other country;
• Whether it is well-known globally or in specific jurisdictions;
• Whether the general public in India is aware of it.

Petitioner’s Standpoint:

TikTok’s legal team placed heavy reliance on clause (i) of Section 11(9), arguing that actual use in India is not required for a trademark to be declared well-known. They contended that the ongoing ban on the app in India should not automatically prevent the trademark from being recognised as well-known under the law.The petitioner also highlighted that the TikTok brand has massive global recognition, and the ban in India was imposed much later, long after the mark had gained popularity.

Registrar’s Reasoning for Rejection:

The Registrar, in its decision, gave significant importance to the ban imposed by the Indian government on the TikTok app. This ban was introduced under the Information Technology Act, citing serious concerns such as:

• Threat to India’s sovereignty and integrity
• National defense and public safety concerns
• Data privacy risks
• Issues like cyberbullying, morphing of images, and explicit content

The Registrar also referenced various materials from public sources, including press releases and media coverage, to back the view that the TikTok application had raised concerns that went beyond commercial branding—touching upon sensitive national interests. The decision even mentioned the Constitution of India to emphasize the broader implications.

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What the Court Observed:

While evaluating the petition, the Court acknowledged that the Registrar had, at one point, wrongly referred to Section 9 of the Trade Marks Act (which is related to grounds for refusal of registration). However, the Court was clear in saying that this mistake alone doesn't invalidate the entire order.

Instead, the Court looked deeper into the substance of the Registrar’s reasoning. It emphasized that Section 11(6) allows the Registrar to consider any relevant factor, not just those listed under that section. So, even though the app's usage in India is not required under the law (as per Section 11(9)), the national security concerns and the government-imposed ban are still valid considerations.

The Court also noted that being declared a well-known trademark is not an automatic right—it is a special status granted at the discretion of the Registrar based on public interest.

Even though TikTok’s trademark is already registered in India and benefits from statutory protection under the Trade Marks Act, being included in the well-known list provides additional legal safeguards, especially against misuse or dilution of the mark. However, in this case, the Court agreed with the Registrar that the present circumstances do not warrant such enhanced recognition.

Final Verdict:

The Court ruled in favour of the Registrar’s decision and dismissed the petition filed by TikTok. It observed that:

• The ban imposed by the Government of India on the TikTok app still stands and hasn't been lifted by any competent authority or court.
• The reasons for the ban—including concerns around sovereignty, public order, and data security—are serious and can rightly be taken into account when deciding whether the brand deserves the added protection of being labelled as “well-known.”
• Thus, the Registrar acted within legal bounds, using discretion as provided under Section 11(6), and no legal error was found in rejecting TikTok’s request.

Conclusion:

This case is a significant example of how trademark law intersects with national security and public interest. While the law clearly provides that use or registration in India is not mandatory for declaring a trademark as well-known, public policy concerns—like the app being banned for security reasons—can tip the balance against granting such status.

The judgment underscores the Registrar’s broad discretionary powers under the Trade Marks Act, and how those powers must be exercised within the constitutional framework of the country. In this instance, the Court upheld the view that a brand linked to an application banned for serious national concerns should not receive the elevated protection reserved for well-known marks.