The Bombay High Court has upheld the Registrar of Trade Marks' decision to deny TikTok’s inclusion in the official list of “well-known” trademarks, citing the continuing government ban on the app over national security concerns.

Justice Manish Pitale, delivering the judgment, dismissed the petition filed by TikTok Limited, which had challenged the Registrar’s October 31, 2023 order rejecting its application under Rule 124 of the Trade Marks Rules, 2017.

The High Court noted that the ban on TikTok, imposed by the Government of India under the Information Technology Act due to concerns about threats to national sovereignty, public order, and misuse of user data, was a relevant and serious factor that the Registrar was justified in considering. “These are serious matters, which cannot be ignored,” the Court observed.

TikTok, though already a registered trademark in India, had sought recognition as a “well-known” trademark, which would grant the mark broader statutory protection across all classes of goods and services. It argued that the Registrar’s decision was legally flawed and based entirely on media reports and government press releases rather than the statutory factors outlined in Section 11(6) to (9) of the Trade Marks Act, 1999.

The petitioners contended that the Registrar had wrongly invoked Section 9 of the Act—which concerns absolute grounds for refusal of registration—when the matter related to recognition under Section 11. They emphasized that under Section 11(9), actual use or continued presence in the Indian market is not a prerequisite for a trademark to be recognized as well-known.

However, the Court found that while the Registrar’s reasoning could have been more precisely articulated with respect to statutory provisions, the decision itself was not legally infirm. It held that under Section 11(6), the Registrar is empowered to consider “any fact” deemed relevant when assessing whether a mark is well-known.

The Court emphasized that inclusion in the list of well-known trademarks would afford TikTok enhanced legal protection, despite the app being banned in India. In that context, the Registrar’s decision to withhold such protection, in light of unresolved national security concerns and official prohibitions, was found to be reasonable and within the legal framework.

“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 observed, adding that the continued ban had not been overturned by any competent authority.

TikTok Limited was represented by Advocates Swati Mittal, Manisha Singh, Abhai Pandey, Anju Agrawal, Gautam Kumar, Ritika Agrawal, Paulome Mehta, Shubhankar Sharma, and Ishvendra Tiwari, instructed by Sonal Doshi & Co.

The Trade Marks Registrar was represented by Advocates Yashodeep Deshmukh, Leena Patil, and V. Deshmukh.