The Bombay High Court, on 10th June, 2025, upheld the decision of the Assistant Registrar of Trademarks in the case of TikTok Limited v. The Registrar of Trademarks, Mumbai & Anr, rejecting the application filed by the Petitioner/TikTok to include their registered trademark in the list of well-known trademarks in India.
In the present case, TikTok, a globally recognised social media giant, filed an application before the Trademarks Registry of Mumbai in accordance with Section 124 of the Trade Mark Rules, 2017, seeking recognition of its registered mark as a ‘well-known’ trademark. However, the Registry refused the application on the grounds that the platform had been banned by the Government of India, as it was deemed prejudicial to the sovereignty and integrity of India.
TikTok challenged this decision before the High Court of Bombay, asserting that the order was made without proper consideration by merely quoting several news articles and press releases regarding the ban of the TikTok application in India. They also argued that the Registry erred in law and failed to apply the correct statutory criteria, particularly by referencing Section 9 instead of Section 11. They also contended that, according to Section 11(9) of the Act, the use or registration of a trademark in India is not mandatory, and thus, the fact that the App is banned and no longer in use in India should not influence the decision.
However, Justice Manish Pitale, who presided over the matter, maintained the Registry’s order and dismissed the arguments made by TikTok. Although the Court agreed that the Registry’s refusal order did not refer to Sections 11(6) to 11 (9), and relied on Section 9, which has no relevance to the present matter, it observed that the same cannot be a ground to set aside the order. The Court also observed that the factors mentioned under Section 11(6) of the Act for determining a trademark as a well-known trademark are not exhaustive.
- But, as noted hereinabove, the factors included in Section 11(6) are not exhaustive in nature and it is crucial that the aforesaid provision specifies that the Registrar can take into account “any fact which he considers relevant for determining a trade mark as a well-known trade mark”, the Court noted.
The ongoing ban on the TikTok App by the Government of India, enacted under the Information Technology Act and its associated rules, remains a significant factor, especially given its implications for the nation’s sovereignty, integrity, defence, and public order. The Court also noted that the Petitioners’ evidence for substantial recognition was inadequate, particularly since the App has not been operational in India since 2020. The Court concluded that since the mark is already registered in India, it enjoys all statutory protection under the Act, and the status of being a well-known mark is merely a bonus. As the ban has not been overturned by any competent court or authority, the Court found no grounds to grant the Petitioner’s request.
The judgment in the present case sheds new light on the requirements for a mark to be identified as a well-known mark in India by observing that national security concerns may also be grounds for denying well-known status to a trademark, even if it enjoys global recognition. The Trade Marks Act primarily focuses on consumer perception and brand recognition, yet the Court upheld the Registrar’s reliance on TikTok’s ban as a decisive factor. The ruling also implies that a brand’s presence in India is important for obtaining well-known status, even though Section 11(9) explicitly states that use or registration in India is not mandatory. This interpretation could be to the disadvantage of foreign brands with significant global recognition but limited Indian operations, potentially discouraging international businesses from seeking well-known status in India.
Having said that, TikTok’s mark is already registered and enjoys statutory protection in India under the Trade Marks Act. This means that it can prevent unauthorized use of its mark or a similar mark in the same or similar industries. The denial of well-known status does not affect its ability to enforce its trademark rights in India. However, a well-known status would have provided broader protection against misuse, including in unrelated industries.
By Shwetha S Menon
