Bombay High Court denies well-known tag for TikTok in India

TikTok Limited, a technology company operating a social media video application called TikTok, has been denied the coveted well-known status in India, despite its global outreach and immense popularity worldwide.

Facts and background

TikTok applied for the declaration of its name as a well-known mark in India. The framework for determining whether a trademark is well-known is provided in Rule 124 of the Trade Mark Rules 2017, which refers to Sections 11(6) to 11(9) of the Trade Marks Act. These sections outline various factors that the Registrar should consider, such as the public’s recognition of the trademark, the duration and extent of its use and promotion, and the record of successful enforcement of the trademark rights, among others.

TikTok’s application was refused by the Registrar of Trade Marks, holding that the App was banned in June 2020 by the Government of India due to concerns about sovereignty, integrity, and data privacy, as well as the fact that TikTok’s servers are located in China. The Registrar also referred to specific instances where pictures of women and girls downloaded from TikTok were morphed, as well as cases of cyberbullying and sexually explicit content.

Challenge to the Bombay High Court

TikTok challenged the decision in the Bombay High Court and argued the following:

1. Lack of proper consideration: TikTok Limited argued that the statutory provisions of the Trade Marks Act, 1999, and the Rules framed thereunder were not adequately considered by the Registrar of Trade Marks (Respondent) while passing the impugned order.
2. Non-application of mind: TikTok claimed that the impugned order was passed without proper reasoning, as certain press releases of the Government of India were quoted without any application of mind. They argued that the Respondent made reference to Section 9 of the Trade Marks Act, which was irrelevant to their application, and failed to consider Section 11, which was the pertinent section.
3. Elaborate material ignored: TikTok Limited submitted that they had placed elaborate material before the Respondent to justify their prayer for inclusion of the TikTok mark in the list of well-known marks, but no reference was made to this material in the impugned order.
4. Transient nature of ban: The petitioner argued that the ban imposed on the TikTok application by the Government of India was a transient situation and should not be the basis for refusing their application.
5. Lack of discussion on relevant factors: TikTok Limited contended that there was no discussion on the factors to be considered under Section 11(6) of the Trade Marks Act for determining whether their trademark deserved to be included in the list of well-known trademarks. They requested that the matter be remanded back to the Respondent for fresh consideration in light of the requirements under the Trade Marks Act and Rules.

The court upheld the Registrar’s decision and provided the following reasons for refusing TikTok’s application:

• The Registrar is empowered to consider any fact deemed relevant for determining a trademark as well-known, as outlined in Section 11(6) of the Trade Marks Act. This includes factors beyond those explicitly listed in the Act. The factors listed in Section 11(6) are illustrative and not exhaustive. The Registrar can consider other relevant facts, such as the ban on the application.
• The banning of the TikTok application by the Government of India, while exercising power under the Information Technology Act and Rules, was indeed a relevant fact taken into consideration by the Registrar.

Our comment

The decision highlights the broad discretion of the Registrar in determining well-known trademarks and the significance of government actions and constitutional considerations in such decisions. Further, trade and geopolitical factors can influence the outcome.

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