The Bombay High Court upheld the Registrar’s decision denying TikTok “well-known” trademark status. The ongoing national ban on the app over security concerns played a key role in the verdict.
The Bombay High Court has recently supported the decision of the Trade Marks Registrar to reject TikTok’s request to include its name in the list of “well-known” trademarks under Rule 124 of the Trade Marks Rules, 2017.
The Court said that the Government of India’s ban on the TikTok app due to national security concerns was an important and valid reason for denying the request.
The case was heard by Justice Manish Pitale, who passed the judgment in a petition filed by TikTok Limited through its attorney Faheem Ahmad.
TikTok had challenged the Registrar’s order dated October 31, 2023, which denied its application to be recognised as a “well-known” trademark.
TikTok is already a registered trademark in India, but inclusion in the “well-known” list would have given it extra legal protection under the Trade Marks Act.
The High Court agreed with the Registrar’s decision, stating that there was no fault in relying on the Government’s ban while considering the application.
The Court observed that under the Trade Marks Act, the Registrar is allowed to look at “any fact” that is relevant while deciding if a trademark is “well-known.”
The judge said,
“These are serious matters, which cannot be ignored,” while referring to the Government’s decision to ban TikTok over concerns related to the “sovereignty and integrity of India, defence and public order.”
TikTok had argued that the Registrar had not applied its mind properly and made a legal error in its order.
According to the company, the Registrar wrongly referred to Section 9 of the Trade Marks Act, which deals with absolute grounds for refusal of registration.
TikTok argued that only Section 11 was relevant, especially because it relates to the recognition of well-known marks.
The company further claimed that the Registrar’s decision was based only on news reports and press releases about the TikTok ban and that no consideration was given to the important legal points mentioned in Section 11(6) to (9) of the Act.
These points include the popularity of the brand among people, how long it has been used, how much it has been used, and if there have been efforts to stop misuse of the brand.
TikTok also pointed out that under Section 11(9), it is clearly written that a trademark does not need to be used or registered in India for it to be declared “well-known.” The company said that just because the app is banned and not currently in use, it should not count against it in the decision.
However, the High Court did not agree with this line of argument. Justice Pitale stated that although the Registrar could have been more careful while mentioning the correct sections of the law, the main reason behind the decision was still valid.
The judge noted that the Registrar had relied on “press material” and official actions taken under the Information Technology Act, along with allegations of
“misuse of data, morphed images, and cyberbullying.”
Justice Pitale said that under Section 11(6), the Registrar has the right to consider any fact that is relevant while deciding if a trademark should be included in the “well-known” list.
The judge also pointed out that if TikTok’s trademark was added to the well-known list, it would get a higher level of protection even though the app is banned in India.
The Court said,
“Since the said mark is already a registered trade mark in India, it does enjoy all statutory protection… but inclusion in the list of well known marks obviously gives added protection.”
Considering that the ban on TikTok is still in place and has not been lifted by any competent authority or court, the High Court said that the Registrar was right and had acted lawfully in refusing TikTok’s request to include its mark in the well-known list.
TikTok was represented by a team of lawyers including Advocates Swati Mittal, Manisha Singh, Abhai Pandey, Anju Agrawal, Gautam Kumar, Ritika Agrawal, Paulome Mehta, Shubhankar Sharma, and Ishvendra Tiwari. The team was instructed by Sonal Doshi & Co.
On the other side, the Registrar of Trademarks was represented by Advocates Yashodeep Deshmukh, Leena Patil, and V Deshmukh.
Case Title:
TikTok Vs Registrar of Trademarks
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