Hon'ble Bombay High Court's recent decision in TikTok Ltd. v. Registrar of Trade Marks raises a very fundamental question — can a registered trademark be denied 'well-known' status solely citing the policy decision of government to ban the service/website associated with such trademark?

TikTok, through its constituted attorney, filed an application seeking inclusion of its registered trademark in the list of well-known trademarks under Rule 124 of the Trade Marks Rules, 2017. This application was rejected by the Registrar, citing the Government of India's ban on the app over national security, privacy and public order concerns. (See, para 4 of the judgement)

High Court upheld this reasoning, noting that the Registrar was within the statutory framework to consider the ban as a factor because of the discretion afforded under Section 11(6) of the Trade Marks Act, 1999. At a first glance, this appears to be a straightforward application of the open ended discretion (take into account any fact which he considers relevant). Nonetheless, on a closer reading, this approach leads to some loud questions.

The Role of the Consumer

While trademark law is generally understood as a framework for protection of businesses and commerce, it also serves a much greater purpose, i.e., of identifiers in the minds of consumers. All the Indian Courts, including the Supreme Court, has consistently emphasized that one of the major purposes that trademarks serve is that of source identifier. In Satyam Infoway v. Sifynet Solutions (2004), the Supreme Court stressed that trademarks (domain names, to be specific) are primarily about helping consumers identify the source of goods or services. Delhi High Court, in V.R. Industries (P) Ltd. v. Rajesh Kejriwal (2024), observed that use of similar competing trademarks is required to be interdicted not only to protect the rights of the registered proprietor of the trademark but also for protection of the public at large. The trademark serves as a source identifier and the persons purchasing the said product identify the source of the product on the basis of the trademark.

In fact, Section 11(6) of the Trade Marks Act, which provides that while undertaking the determination of a mark as a 'well-known' mark, the registrar shall take into account any fact that they consider relevant, also provides an inclusive list of such factors. All of which centers around the extent of recognition, usage, promotion, and the mark's presence in market. This list, although not being exhaustive, is sewn through a common thread – all the illustrated factors are connected to consumer perception.

Section 11(7) make things further clear. It lays down the factors for determining recognition of a mark in a relevant section of public. These factors include number of consumers – actual & potential, number of people involved in distribution channels and business circles involved in commerce of the concerned goods or services. Again, the common thread appears.

In sequitur, section 11(9) sheds some light as to what all factors shall not be required to be looked into for granting 'well-known' status. It includes use of such mark in India.

Building on this understanding of trademark law, I proceed to highlight some flaws in the approach undertaken by the Registrar and Hon'ble Bombay High Court in rejecting the application of TikTok seeking 'well-known' status.

A Flawed Approach

The judgement of the High Court concedes that according to Section 11(9) of the Trademark Act, use of the concerned mark in India is not a pre-requisite for recognition of that mark as a 'well-known' mark. (para 14) Nonetheless, it goes on to uphold the decision of the registrar solely on the ground that the factors included in Section 11(6) are not exhaustive in nature and the phrase 'any fact which he considers relevant' very well includes the fact of ban imposed by Government of India on the operations of TikTok in India. Simultaneously, it offers no discussion whatsoever with respect to other factors like continued consumer association with mark TikTok.

This approach raises a very important question – can the discretion provided in section 11(6) vis-à-vis relevancy of a fact be used to include every and any fact under the sun as a relevant fact?

From a reading of the 'well-known mark' framework in the Trade Marks Act, 1999, the answer appears to be no! This is because of two reasons – firstly, otherwise it will lead to an unguided discretion which will go into the teeth of principle of non-arbitrariness; secondly, the act itself provides ample guidance as to how to construe 'any relevant fact'.

This guidance flows from two provisions – section 2(1)(zg) and section 11(6).

The former defines a 'well-known trademark'. It states that a 'well-known trademark' in relation to a good or service means a mark which has become well-known to the substantial segment of the public. According to this definition, the only thing relevant for a mark to be designated 'well-known' is its reputation across a substantial segment of the public. Such an understanding is further bolstered by section 11(6). It provides an inclusive list of class of factors relevant for granting the well-known status. As I have already explained above, all these factors are tied by a common thread – of consumer/public perception. Therefore, to read 'any fact relevant' as divorced from the common thread of consumer/public perception will disregard the intention of the legislature in providing for a framework for protection of well-known trademarks.

The whole idea of 'well-known' mark protection essentially emanates from the reputation commanded by that mark in the market and in the minds of the consumers. Hence, to read factors like government ban over the device of a trademark in order to deny grant of a 'well-known' status, which otherwise is protected in law, will open a Pandora's Box.

Registered, but not “Well-Known”

Yet another intriguing aspect of this dispute is the fact that several “TikTok” trademarks continue to be registered in the register of trademarks. For example, application numbers 4270731, 4474009 and 4522339 in journal numbers 1922, 2089 and 1978 respectively. All these marks enjoy continued registration in class 38.

This makes it clear that while the government has banned the device (mobile application and website) of this trademark, it has not invalidated or cancelled the trademarks. This leads to a situation where the “TikTok” mark is not sufficiently prejudicial (to the sovereignty and integrity of India) to remain registered and enjoy legal protection, but sufficiently prejudicial to be recognized as “well-known”. All that comes to my mind is – what a strange dichotomy!

Ramifications

To refuse a mark a well-known status solely because one or some of its devices are banned by the government at the moment unnecessarily and rather wrongly shifts the nature of the inquiry. Such a ban in context of trademark jurisprudence only implies mark's 'non-use' and nothing else.

This decision may or may not immediately affect “TikTok” as a trademark or brand, but the precedent it sets is very problematic. It allows decisions on recognition of a trademark as 'well-known' to depend on factors that may have nothing to do with the mark's well-known reputation in the marketplace and in the minds of the actual and potential consumers. If consumer/public perception and recognition of reputation of a trademark is no longer nucleus of this inquiry, then there is an imminent risk that well-established legal standards will be replaced by other extraneous considerations. Hence, this approach deserves some degree of scrutiny.

Views are personal.