Mumbai: The Bombay High Court has dismissed a petition filed by TikTok Limited seeking inclusion of its mark in the list of “well-known” trademarks under Rule 124 of the Trade Marks Rules, 2017. The Court upheld the Trade Marks Registrar’s decision to deny the request, citing the continuing ban on the TikTok app in India over national security concerns as a relevant and valid factor.
Justice Manish Pitale, on June 10, observed that the reasons behind the government’s decision to block access to the TikTok app involved serious matters of sovereignty, integrity, 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,” he stated.
TikTok, through its constituted attorney Faheem Ahmad, had challenged the Registrar’s October 31, 2023 order. While its trademark is already registered in India, the company had sought the enhanced protection that comes with recognition as a “well-known” mark.
Advocate Swati Mittal, appearing for TikTok, argued that the Registrar had misapplied the law, relying on Section 9 of the Trade Marks Act—dealing with absolute grounds for refusal—when Section 11, which pertains to well-known marks, was applicable.
The company further contended that the Registrar failed to consider the statutory criteria under Sections 11(6) to (9), including the extent of public recognition, duration of use, and enforcement history. It also cited Section 11(9), which clarifies that use or registration in India is not mandatory for determining well-known status.
Respondent’s counsel, Yashodeep Deshmukh, submitted that the order did take into consideration the relevant material while refusing the company’s application for inclusion of its mark in the list of well known marks.
The Court found no legal error in the Registrar’s decision. “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,” the Court noted.
“In light of the fact that the application TikTok itself has been banned in India, which till date admittedly has not been set aside by any Competent Court or Authority, this Court finds that no error can be attributed to the said respondent,” the order concluded.
