Reel but no Real Recognition: TikTok Denied Well-Known Trade Mark Protection

Recently, the parent organisation of the popular short video content brand “TikTok” filed a petition before the Hon'ble Bombay Bench challenging the decisions made by the Registrar of Trademarks, Mumbai, and the Assistant Registrar of Trademarks, Mumbai [who were impleaded as Respondents in the proceedings].

TikTok Limited had filed an application under Rule 124 under the 2017 Rules to the Trademarks Act to the Registrar of Trademarks to have their popular “TikTok” mark declared a “well-known trademark” in India. Despite TikTok's widespread popularity and global recognition, the Registrar of Trademarks had refused the application, a decision subsequently upheld by the Hon'ble Bombay High Court.

This case dealt with the central question of whether national security and broader public policy considerations can override a brand's commercial fame when determining its well-known status under trademark law.

Well-known Marks

Well-known marks are trademarks that, due to their extensive reputation or recognition, can receive stronger protection than any ordinary mark, safeguarding them from infringement or passing off. Unlike ordinary registered trademarks that receive protection only in specific geographic regions and for particular classes of goods and services, well-known trademarks enjoy country-wide protection across all classes of goods and services.

Further, the “well-known” status also prevents the use of such trademarks in corporate names and can lead to higher awards in infringement proceedings. The Paris Convention [Article 6bis] and the Agreement on Trade-Related Aspects of Intellectual Property Rights [TRIPS Agreement] [Article 16] set the global benchmarks for the protection of famous and renowned trademarks.

In India, a “well-known trademark” is defined under Section 2[1] [zg] of the Trademarks Act, 1999 [hereinafter referred to as “the Act”] as marks that are so widely recognised by the public that their use on other goods may imply a false trade connection, leading to consumer confusion.

India, as a member of the World Trade Organization [WTO], has incorporated factors from the WIPO “Joint Resolution Concerning Provisions on the Protection of Well-Known Marks” [1999] into Section 11[6] of the Act. 

Case Brief: TikTok Ltd. v. Registrar Of Trademarks

In the present case, TikTok Ltd. argued that the legal provisions of the Act [particularly Section 9] along with the associated Rules [Rule 124 of the Trademark Rules], were not adequately considered by the Respondents when issuing the impugned order.

The Respondent 1, however, explained that the Government of India deemed the TikTok application controversial and subsequently banned it, citing that the application was considered harmful to the sovereignty and integrity of the country.

The Petitioner contended that Respondent 1's denial was based solely on news articles and press releases regarding the TikTok ban and that Respondent 1 had not considered the matter properly. It was further submitted that Respondent 1 incorrectly cited Section 9 of the Act, 1999, which addresses absolute grounds for refusal of registration, and failed to mention Section 11, which is pertinent to the acknowledgment of well-known marks. [1]

However, there was a notable absence of discussion concerning the factors specified in Section 11[6] of the mentioned act, which addresses the considerations necessary for assessing whether a mark is well-known, including its recognition. The Registrar maintained that the government ban, as stated in the Information Technology Act, 2000 [hereinafter the “IT Act”], was a pertinent factor under Section 11[6] of the Act, which permits the Registrar to consider “any fact he deems relevant”, and that the examples listed in the section were merely illustrative and not comprehensive/exhaustive. [2]

Decision

The Hon’ble High Court of Bombay, through HMJ Justice Manish Pitale, partly affirmed the Registrar's decision. The Court held that while the Registrar's reliance on Section 9 of the Act was erroneous and irrelevant, this error alone was insufficient to set aside the order. Rather, the substance of the decision was found to lie in the Registrar's reasoning under Section 11[6].

The Court emphasized that the core reasoning stemmed from Section 11[6] of the Act. The Registrar had evaluated the application to designate ‘TikTok’ as a well-known trademark under Rule 124 of the 2017 Rules. However, the order failed to reference Sections 11[6] to [9], which should have guided the decision. Still, the Court found the Registrar had considered broader national concerns, including the controversy surrounding the application 'TikTok' and the press release from the Government of India prohibiting the use of the 'TikTok' application [owing to data privacy issues as the application's servers are based in China, as well as concerns about sexually explicit content, and cyberbullying].

The Court remarked that the Respondent 1 was, therefore, justified in factoring in these concerns, even if they weren’t specifically listed under Section 11[6]. While the trademark remains registered in India, inclusion in the well-known trademark list offers extra protection. Given the app’s ongoing ban, the Court concluded that rejecting the petitioner’s request was reasonable and lawful .[3]

Therefore, the Court concluded that Respondent 1 acted appropriately in denying the petitioner’s request, given that the TikTok application was banned in India and that this ban had not yet been overturned by any Competent Court or Authority.

Analysis: Implication, Legal Significance And Criticism

The broad interpretation of the phrase “any fact” in Section 11[6] of the Act raises both legal and practical issues. When read alongside Rule 124 of the 2017 Rules under the Act, Section 11[6] indicates that recognising a mark as well-known is essential, and factors like “national security” and foreign policy do not come into play. Furthermore, section 11[9][i] asserts that a lack of use in India cannot prevent the acknowledgement of a mark.

This decision is based on subjective values and national policy instead of an objective evaluation of public recognition, establishing a troubling precedent. In fact, previously, the Courts have defended trademarks that have been prohibited or are unavailable in India, as seen in Playboy Enterprises v. Bharat Malik . Herein, the mark was recognised despite a ban in India. In fact, in Kamal Trading Co. and Ors. v. Gillette U.K. Ltd ., the Court allowed the usage of the mark despite no usage in India. In these instances, consumer perception was deemed crucial.

In this specific case, the Trademark Office and the Bombay High Court should have followed the reasoning outlined in the previous judgments, as TikTok is widely recognised across India, both before and after its ban. Legal status or prohibitions should not be considered when determining the well-known status of a mark. Such a prohibition could be temporary, and applying the law could lead to significant practical repercussions, including the dilution of the well-established mark.

It is also crucial to understand that the broad discretion exercised by the Registrar and affirmed by the Court may introduce unpredictability and potential for abuse in trademark recognition, especially for international brands. This obscurity could potentially inhibit international trademark holders from investing in India, as they might suspect an unpredictable IP regime. 

Conclusion

The Hon’ble High Court of Bombay, by giving a contrary opinion, has made the legal landscape pertaining to well-known trademarks and the powers of the registry and registrar ambiguous. While national security should always be a priority, the failure to recognise the widespread popularity of the mark and that TikTok was once the bread and butter for many people in India [it is popular among the masses even after getting banned], and ignoring the precedents set by it, the Bench has set a dangerous precedent for using political or public policy bans as grounds for trademark denial, potentially blurring the lines between domestic governance and intellectual property assessment.