Bombay High Court Upholds Order Refusing To Declare ‘TikTok’ As Well Known Trademark Owing To Its Ban In India

 By this petition, the petitioner has challenged order dated

31st October 2023 passed by the respondent-Assistant Registrar of

Trade Marks, refusing an application filed on behalf of the

petitioner for inclusion of its registered trade mark/TikTok in the

list of well known marks under Rule 124 of the Trade Mark Rules

2017. It is the case of the petitioner that the statutory provisions

of the Trade Marks Act, 1999 and Rules framed thereunder, were

not taken into consideration in a proper perspective by the said

respondent while passing the impugned order.

2. Before referring to the rival submissions, it would be

appropriate to briefly refer to the relevant facts.

3. The petitioner is a technology company operating a range of

content platforms, including a platform/mobile application bearing

the mark TikTok. It is undisputed that TikTok is a registered trade

mark. It is stated that TikTok is a social media video application

for creating and sharing short talent videos. The videos are

allowed to be created by the users of the application on short

music and lip-syncing videos for uploading on the application.

4. The application was launched worldwide in the year 2017

and it employs Artificial Intelligence to analyze interests and

preferences of users through their interaction with the content and

it displays a personalized content feed to each user. By the year

2019, the aforesaid application TikTok was available in 155

markets and in 75 languages. It gained immense popularity and at

a point in time, its downloads surpassed those of FaceBook,

YouTube and Instagram. It is stated that while the petitioner has

already obtained registration for its mark TikTok in India, some

other applications for registration are pending before the

respondent. In the statement of case placed before the respondent,

the petitioner staked its claim for inclusion in the list of well

known marks in terms of the provisions of the Trade Marks Act.

Accordingly, the proceeding under Rule 124 of the Trade Mark

Rules for inclusion of the mark TikTok in the list of well known

trade marks was initiated. The said respondent kept the matter for

hearing and after hearing, by the impugned order, the application

filed by the petitioner was refused. The main reason recorded in

the impugned order was that the application TikTok was found to

be controversial by the Government of India and it stood banned

in India, as the Government of India found the said application to

be prejudicial to the sovereignty and integrity of India and for

other such reasons.

5. Ms. Swati Mittal, learned counsel appearing for the

petitioner, submitted that the impugned order can be said to be an

order passed without reasons as certain press releases of the

Government of India were quoted and without any application of

mind, the impugned order was passed resulting in refusal of the

application filed on behalf of the petitioner for inclusion of the

mark TikTok in the list of well known marks. It was submitted that

the non-application of mind was further evident from the fact that

the said respondent made reference to Section 9 of the Trade

Marks Act, which had no concern with the application filed by the

petitioner. Only Section 11 of the Trade Marks Act was relevant,

which was not even referred to and therefore, the impugned order

deserves to be set aside.

6. It was further submitted that elaborate material was placed

before the said respondent to justify the prayer for inclusion of the

mark TikTok in the list of well known marks, but no reference was

made to the same in the impugned order for refusing the

application.

7. It was submitted that therefore, the only reason discernible

from the impugned order is the ban on the application TikTok

issued by the Government of India by referring to a news item

published in the magazine India Today. The learned counsel for

the petitioner submitted that the ban imposed on some of the

applications, along with the application of the petitioner, was

lifted and therefore, mere banning of an application, which is

necessarily a transient situation, cannot be the basis for refusing

such an application for inclusion in the list of well known marks.

It was submitted that there was no discussion on the factors to be

taken into consideration by the said respondent under Section

11(6) of the Trade Marks Act, for determining the question as to

whether the trade mark of the petitioner deserves to be included

in the list of well known trade marks and hence, the impugned

order deserves to be set aside. It was indicated that this Court may

consider remanding the matter back to the said respondent for

consideration afresh in the light of the requirements under the

Trade Marks Act and Rules.

8. On the other hand, Mr. Yashodeep Deshmukh, learned

counsel appearing for the respondent, submitted that the

impugned order did take into consideration the relevant material

while refusing the application of the petitioner for inclusion of its

mark in the list of well known marks. It was submitted that merely

because the said respondent referred to the wrong provision, in

itself cannot be a ground for setting aside the order. It was further

submitted that the factors indicated in Section 11(6) of the Trade

Marks Act are not exhaustive in nature and that therefore, the said

respondent was justified in taking into consideration banning of

the application TikTok, while refusing to grant the application for

inclusion of the said mark in the list of well known marks.

9. It was further submitted that the said respondent correctly

referred to the relevant provisions in the Constitution of India and

in that context, the relevance of the banning of the application

TikTok by the Government of India, while passing the impugned

order. On this basis, it was submitted that the petition deserved to

be dismissed.

10. Before considering the rival submissions, it would be

appropriate to first refer to the relevant provisions under the

Trade Marks Act and Rules. Rule 124 of the Trade Mark Rules,

concerning the determination of well known trade mark by the

Registrar, specifies in sub-Rule (2) that while determining the trade

mark as well known, the Registrar shall take into account the

provisions of sub-Sections (6) to (9) of Section 11 of the Trade

Marks Act. Thus, it becomes clear that while considering such an

application as filed by the petitioner, the Registrar is required to

keep in focus the requirements of Section 11(6) to (9) of the Trade

Marks Act. It would be appropriate to refer to the said provisions,

which read as follows :

“Section 11 – Relative grounds for refusal of registration.

(6) The Registrar shall, while determining whether a trade

mark is a well-known trade mark, take into account any fact

which he considers relevant for determining a trade mark as a

well-known trade mark including—

(i) the knowledge or recognition of that trade mark in

the relevant section of the public including knowledge in

India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any

use of that trade mark;

(iii) the duration, extent and geographical area of any

promotion of the trade mark, including advertising or

publicity and presentation, at fairs or exhibition of the goods

or services to which the trade mark applies;

(iv) the duration and geographical area of any

registration of or any application for registration of that trade

mark under this Act to the extent that they reflect the use or

recognition of the trade mark;

(v) the record of successful enforcement of the rights in

that trade mark, in particular the extent to which the trade

mark has been recognised as a well-known trade mark by any

court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a

trade mark is known or recognised in a relevant section of the

public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the

goods or services;

(ii) the number of persons involved in the channels of

distribution of the goods or services;

(iii) the business circles dealing with the goods or

services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well

known in at least one relevant section of the public in India by

any court or Registrar, the Registrar shall consider that trade

mark as a well-known trade mark for registration under this

Act.

(9) The Registrar shall not require as a condition, for

determining whether a trade mark is a well-known trade

mark, any of the following, namely:—

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade

mark has been filed in India;

(iv) that the trade mark—

(a) is well-known in; or

(b) has been registered in; or

(c) in respect of which an application for

registration has been filed in, any jurisdiction other than

India, or

(v) that the trade mark is well-known to the public at

large in India.”

11. Section 11(6) of the Trade Marks Act provides that a

Registrar shall take into account any fact that he considers relevant

for determining a trade mark as a well known trade mark,

including facts specified in clauses (i) to (v) of the said sub-Section.

A bare perusal of the said provision shows that it is not exhaustive

in nature.

12. Section 11(7) of the Trade Marks Act elaborates the

circumstances to be taken into consideration by the Registrar

while applying Section 11(6) thereof.

13. Section 11(8) of the Trade Marks Act lays down that when a

trade mark is already determined to be a well known mark by any

Court or Registrar, it shall be considered as a well known trade

mark under the Trade Marks Act.

14. Section 11(9) of the Trade Marks Act specifies that the

Registrar shall not require as a pre-condition satisfaction of clauses

(i) to (v) of the said sub-Section for determining whether a trade

mark is a well known trade mark. The learned counsel for the

petitioner has placed much emphasis on Clause (i) of Section 11(9)

of the Trade Marks Act, which specifies that the aspect as to

whether the trade mark has been used in India or not, shall not be

taken as a condition by the Registrar while determining whether

such a trade mark is a well known trade mark. It was submitted

that even if, consequent upon ban imposed by the Government of

India on the said application bearing trade mark TikTok of the

petitioner, the trade mark is not being used in India, that in itself

cannot be a ground to hold against the petitioner.

15. This Court is of the opinion that the impugned order indeed

does not refer to Section 11(6) to (9) of the Trade Marks Act. In

fact, it refers to Section 9 thereof, which is obviously not relevant

for considering the application filed by the petitioner. But, that in

itself cannot be a ground to set aside the impugned order.

16. A perusal of the impugned order shows that the respondent

has take into account the basis of the claim made by the petitioner

for inclusion of its trade mark TikTok in the list of well known

marks. Thereafter, the respondent has referred to the controversy

regarding the application TikTok of the petitioner, specifically

referring to press release issued by the Government of India

banning the application TikTok along with other applications. The

Government of India exercised power under the provisions of the

Information Technology Act and the Rules framed thereunder to

ban the said application of the petitioner bearing the trade mark

TikTok. There is also no dispute about the fact that the said

application remains banned in India.

17. The respondent has then referred to some other material in

the public domain, indicating the reasons as to why the application

TikTok has been banned in India. Thereupon, the respondent has

referred to the Constitution of India, including its preamble and

eventually concluded that the said trade mark of the petitioner

does not deserve to be included in the list of well known marks.

18. The reasoning adopted in the impugned order does not

show reference to the factors indicated in Section 11(6) and (7) of

the Trade Marks Act. But, as noted hereinabove, the factors

included in Section 11(6) are not exhaustive in nature and it is

crucial that the aforesaid provision specifies that the Registrar can

take into account “any fact which he considers relevant for

determining a trade mark as a well known trade mark”. The

factors included in Clauses (i) to (v) in Section 11(6) are obviously

illustrative in nature and the said factors are not exhaustive.

19. Therefore, the respondent is entitled to take into account a

fact which is not mentioned in Clauses (i) to (v) of Section 11(6)

of the Trade Marks Act, while considering the application filed

under Rule 124 of the Trade Mark Rules, for inclusion of the trade

mark in the list of well known marks.

20. As noted hereinabove, the fact taken into consideration by

the respondent is the ban imposed by the Government of India on

the application bearing the trade mark TikTok. The material taken

into consideration by the said respondent in the impugned order

shows that it refers to the aforesaid application of the petitioner

bearing trade mark TikTok being found to be prejudicial to the

sovereignty and integrity of India, Defence of India, Security of

State and Public Order. The Government of India exercised power

under the Information Technology Act and the Rules framed

thereunder, for imposing such a ban. The said respondent also

found that there was material indicating that the ban imposed on

TikTok was also in the backdrop of concerns regarding data

privacy of the users and the fact that the servers of the said

application TikTok are located in China. The said respondent also

referred to certain instances indicating that pictures of some

women and girls downloaded from TikTok were found to be

morphed and that there were cases of cyber bullying and sexually

explicit context.

21. In this backdrop, the said respondent referred to the

Constitution of India while passing the impugned order and

thereupon, refused inclusion of the trade mark TikTok in the list

of well known marks.

22. This Court is of the opinion that the aforesaid material taken

into consideration by the said respondent can be said to be a

relevant factor and it is covered under the aforesaid expression

under Section 11(6) of the Trade Marks Act, highlighted

hereinabove, which specifies that the Registrar (in this case, the

said respondent) can take into account any fact that he considers

as relevant. This Court is of the opinion that the banning of the

application of the petitioner i.e. TikTok by the Government of

India, while exercising power under the Information Technology

Act and Rules, is indeed a relevant fact taken into consideration by

the Registrar. It was admitted on behalf of the petitioner that the

ban still operates. Merely because the ban on certain other

applications has been lifted cannot be a ground for the petitioner

to claim that the impugned order is rendered erroneous.

23. The statutory provisions of the Trade Marks Act and Rules

are relevant and as noted hereinabove, Section 11(6) of the Trade

Marks Act itself 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. Apart from this, the

Constitution of India would require all concerned Authorities to

apply the law within the broad framework, indicated in the

Constitution of India. 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.

24. It is obvious that due to the ban imposed by the Government of India, the aforesaid application bearing the trade mark TikTok cannot be used in India. This would be irrelevant for determining the question of inclusion of the trade mark in the list of well known marks, but, since the said mark is already a registered trade mark in India, it does enjoy all statutory protection available under the Trade Marks Act. Inclusion in the list of well known marks obviously gives added protection to a mark, but in the 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 in passing the impugned order while refusing the application of the petitioner for inclusion of its trade mark TikTok in the list of well known marks.

25. In view of the above, the petition is dismissed.

MANISH PITALE, J.