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Written by Nasreen Serji, a student at Government Law College, Thrissur.   

[TIKTOK LIMITED V. THE REGISTRAR OF TRADE MARKS MUMBAI & ANR, 2025 SCC ONLINE BOM 2323]

The Bombay High Court recently rejected TikTok’s application for recognition as a “well-known” trademark in India. Although the platform enjoys international popularity for its content and user engagement, it has been banned in India since 2020 due to national security concerns. This case sheds light on the legal principles and criteria considered when determining whether a trademark qualifies as “well-known” under Indian law. 

FACTS:

The petitioner, a technology company managing various content platforms, launched the mobile application TikTok in 2017. Designed for creating and sharing short-form talent videos, the app quickly gained immense popularity. However, in 2020, the Government of India banned TikTok under the Information Technology Act, citing concerns over sovereignty and national integrity—a ban that remains in effect.

TikTok had already secured trademark registration in India, with additional applications pending before the Registrar of Trade Marks. The petitioner sought recognition of “TIKTOK” as a well-known mark under Rule 124 of the Trade Marks Rules. This application was rejected by the Registrar through an order dated 31-01-2023, primarily on the grounds of the continuing ban. The decision was subsequently challenged before the Bombay High Court.

SUBMISSIONS:

The petitioner argued that the impugned order was erroneously based on Section 9 of the Trade Marks Act, which outlines the absolute grounds for refusal of registration and was irrelevant in this context. It was submitted that the Registrar should have considered Section 11 of the Act, which was relevant to determination of recognition of well-known marks, which was not applied, thereby rendering the order liable to be set aside. The petitioner further contended that the refusal was based solely on the ban of the TikTok app, without any reference to the factors enumerated under Section 11(6), which guide the determination of a well-known trademark.

In response, the Respondent submitted that the order could not be invalidated merely on the basis of applying an incorrect statutory provision. It was argued that the criteria under Section 11(6) are “simply illustrative and not exhaustive”, and the Registrar had duly considered the app’s ban along with relevant constitutional provisions in passing the impugned order.

FINDINGS:

The Court first examined the relevant provisions governing the registration of well-known trademarks. Rule 124 of the Trade Marks Rules explicitly requires the Registrar to consider Sections 11(6) to 11(9) of the Trade Marks Act. In this scenario, Section 11(9) is significant, which covers trademarks that are well-known to the Indian public, have not been used, have not been registered, have sought for registration, or all of the above. 

The Court held that the respondent should have applied Sections 11(6) to 11(9), rather than relying on Section 9, which concerns absolute grounds for refusal of registration. Nonetheless, it noted that the factors under Section 11(6) are not exhaustive, as the provision allows the Registrar to consider “any fact which he considers relevant” in determining whether a mark qualifies as well-known.

The Court then addressed the crucial issue in the case—the Government of India’s ban on the TikTok app. The ban was imposed following concerns over data privacy violations and the misuse of videos and images involving women and girls. The Court observed that the Registrar had properly considered the app’s ban and had justifiably deemed the mark to be prejudicial to the sovereignty and integrity of India, in line with constitutional principles.

CONCLUSION:

The Court highlighted that the recognition of a mark from being recognized as a “well-known trademark”, which provides it with extra protection, may be irrelevant with the government-imposed ban. However, given that the continued ban on the TikTok application is due to national security concerns, the Court found no fault in the impugned order issued by the Registrar. This decision broadens the interpretative scope of the Registrar’s authority under Section 11(6), while also introducing additional grounds on which “well-known trademark” status may be denied. 

Indian courts have previously granted well-known status to trademarks despite being nationally banned. In the case of Playboy Enterprises Inc v. Bharat Malik & Anr [2001 SCC OnLine Del 406], the Court recognized trans-border reputation. Even if Playboy did not have physical sales or registration in India, its global fame and popularity among Indian consumers made the mark protectable under the Indian IP law. In Kamal Trading Co. and Ors. v. Gillette U.K. Ltd, [1988 (8) PTC 1 (BOM)] the Court observed that though there is no use of the disputed mark in India, the well-known foreign brand can protect its goodwill and reputation. The said cases set the precedent that global brand reputation matters even without local presence. Even when brands are banned, restricted or absent from the Indian market, the Trademark law recognised and protected an international brands reputation and goodwill. Although TikTok retains trademark protection in India from prior registration, the denial of “well-known trademark” from this judgment marks a significant shift in judicial approach for future applicants. By interpreting “any fact” expansively, the Courts have opened new grounds for Registrars to examine and rule on the validity of well-known trademarks registrations.