By Gaurav Bhalla of Ahlawat & Associates
The Bombay High Court recently affirmed the order of the Registrar of Trade Marks whereby TikTok’s application for declaration of its mark as well-known in India was disallowed. Interestingly, this decision (by the Bombay High Court) was not on merits but rather had a heavy influence of sovereignty and integrity of India, its defence and public order. This judgment might serve a message to trademark owners of global digital products to be cautious of the manner of operating their products in India.
TikTok was launched in India in 2017 and became an instant hit with its unique algorithm which offered tailored and engaging short-form content to users. TikTok also obtained a trademark registration further strengthening its trademark rights in India. Subsequently, it filed an application for declaration of its mark as well-known as per the procedure laid down under the Trade Marks Rules, 2017. Interestingly, while the application (for declaration of the mark as well-known) was being examined, TikTok was banned in India (in 2020) citing national security concerns (owing to allegations of data privacy owing to its servers located outside India, circulation of inappropriate content, etc.).
The Registrar of Trade Marks, while adjudicating the application (for declaration of the mark as well-known) declined to grant ‘well-known’ status to the mark TikTok with the rationale that a brand (the product under which is currently prohibited in India) did not align with the criteria for such recognition.
TikTok subsequently knocked the doors of the Bombay High Court by filing an appeal against the order of the Trade Marks registry. TikTok argued that the Registrar’s decision overlooked extensive evidence of its global recognition and popularity. They submitted that the matter be reconsidered with a fresh perspective, and that the ban in India should not negatively affect the brand’s strengthening of its trademark rights.
The primarily question before the Court was whether a trademark of a banned product (mobile application) could qualify as ‘well-known’? The Court referred to Section 11(6) of the Indian Trade Marks Act and mentioned that while the provision lists out some aspects which could be considered while analyzing whether or not a mark is well-known or not, the list under the provision is illustrative and non-exhaustive. The Court also expressly observed that Section 11(6) gives power to the Registrar to take into consideration any fact that he considers relevant for determining a trade mark as a well-known trade mark.
The Court finally observed that “The reasons why the application of the petitioner bearing the trade mark TikTok has been banned pertain to the sovereignty and integrity of India, its Defence and Public Order. These are serious matters, which cannot be ignored and therefore, it is found that the respondent did take into consideration relevant factors while passing the impugned order.” Accordingly, the Court upheld the order of the Trade Marks registry and concluded that TikTok couldn’t be recognized as a well-known mark in India.
It remains to be seen whether TikTok will file an appeal against this judgment. This is one of the rare scenarios where the Court instead of considering the evidence of use of the mark, it ventured into the expansive scope of Section 11(6) and relied upon a prevailing factual scenario to arrive at its conclusion. This judgment has opened a pandora’s box which might lead to many such approaches in the future (where the Trade Marks registry might not keep itself confined to the indicative factors laid down in the statutory provision).