Banned in June 2020 on the grounds of national security, popular short-form video-sharing platform TikTok is no stranger to controversy in India. Continuing this saga, last week, the Bombay High Court (“the Court”) denied recognition to the registered trademark “TikTok” as a “well-known mark” (under Rule 124, Trademark Rules, 2017). Defined in Section 2(zg) of the Trade Marks Act, 1999 (“the Act”), a “well-known trade mark” in relation to any goods or services, refers to a mark that has become so well-known to the “substantial segment of the public” that uses/receives such goods or services, such that the use of the mark in relation to other goods or services would likely be taken as indicating a “connection in the course of trade/or rendering of services in relation to the first-mentioned goods or services.”
Before the Court, the Petitioner TikTok Pvt. Ltd. had challenged an order passed by the Assistant General of Trade Marks, wherein an application seeking recognition of the mark “TikTok” as a “well-known trade mark” was rejected in October 2023. It was argued that not only was the order devoid of application of mind, but also failed to consider Section 11(6) of the Trade Marks Act, 1999 pertaining to factors relevant to the determination of well-known marks. Furthermore, the Petitioner challenged the Assistant General’s reliance on the temporary ban imposed on the TikTok application, as the most important factor in arriving at the decision.
In this backdrop, I present an overview of the Court’s reasoning behind denying the “well-known trademark” status to the registered mark “TikTok”. I undertake an analysis of the legislative intent behind Section 11(6) and surrounding practical considerations, to challenge the Court’s expansive interpretation of the phrase “any fact” in denying recognition to TikTok as a “well-known” mark.
How many Likes 👍🏻 for the Bombay High Court’s Reasoning?
At the outset, the Court referred to Rule 124 of the Trademark Rules, 2017 to establish the process for determination of “well-known trademarks”. Rule 124(2) requires the Registrar to consider Sub-sections (6)-(9) of Section 11 in the Act in effecting such process. Sub-section (6), in turn, provides that in determining whether/not a trademark is a “well-known trademark”, the Registrar may take into account “any fact” which s/he considers relevant for such determination.
The provision itself indicates the following factors in a non-exhaustive list:
“(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 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 recognized as a well-known trade mark by any court or Registrar under that record.”
In examining the impugned order, the Court observed that: firstly, there was a misplaced reliance on Section 9 of the Act that deals with absolute grounds for refusal of registration – the same is irrelevant to the instant case; secondly, the Assistant General did not consider the factors outlined in Section 11. Despite this, the Court expansively read the phrase “any fact” in Section 11(6) to encompass news material highlighting the national security concerns associated with TikTok as relevant factors. It noted that the Constitution of India necessitates the application of law “within its broad framework” – in other words, the Court placed the consideration of material dealing with national policy above the Assistant Registrar’s erroneous ignorance of Section 11, which is directly relevant to the present case.
Challenging the Court’s Overbroad Approach: Morality in Trademark Law?
Firstly, the interplay between Rule 124 and Section 11 becomes relevant here. In Kamdhenu Ltd. v Registrar of Trade Marks (2023), the Delhi High Court emphasised how the consideration of an application seeking recognition as a “well-known trade mark” requires the applicant to present “evidence and documents” such as invoices demonstrating use of the mark in a large geographical area, promotional and advertisement material, exposure on e-commerce platforms, balance sheets and accounting documents, and the like. Read with the factors mentioned in Section 11(6), it becomes evident that the legislative intent (Public Notice issued by the Office of the CG of Patents, Designs, and Trademarks) is not focused on subjective morality relevant to the deciding authority, rather on objective considerations that help determine whether/not the mark in question is so “well-known” to a “substantial segment of the public”.
This is further substantiated by Article 2 of the “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks” adopted by the WIPO in 1999. Despite its non-legally binding nature, the Recommendation holds significant persuasive value in promoting harmonization in international IP law. Clause 1(a) of Article 2 states that in determining the status of a mark as “well-known”, the competent authority shall take into account circumstances from which it “may be inferred that the mark is well-known”. Additionally, none of the factors listed as relevant for consideration in Clause 1(b) of the provision pertain to grounds of morality or government policy. Instead, they deal with the degree of knowledge/recognition of the marks in the concerned audience, the duration, extent, and geographical areas of such marks.
Secondly, even while basing its judgment on the interpretation of the phrase “any fact” under Section 11(6), the Court failed to consider Sub-section 9. This provision enlists factors that the Registrar shall not require as conditions for deciding the grant of a “well-known trademark” status. One of these factors is the use of the concerned trademark in India. The Court’s reliance on the status of TikTok as a banned application implies that the application’s non-use was the most relevant factor in its determination This amounts to a non-compliance with Section 11(9). Here, it is significant to consider that in Playboy Enterprises v Bharat Malik (2001), the Delhi HC protected the “substantial reputation” held by the trademark “Playboy”, despite import restrictions limiting its circulation within India.
On the flipside, even when we interpret the Court’s reasoning as pertinent to determine TikTok’s reputation and goodwill, it is nowhere consistent with the policy intent of granting “well-known” status to trademarks. Rather, the Court’s approach seems outcome-driven (the outcome being the denial of recognition), instead of being the other way around. As acknowledged by the Bombay HC in Girnar Food & Beverages Pvt. Ltd. v TNI Plastics (2024), the objective is to assess whether/not the recognition of the trademark in question is such that it extends beyond a particular class of goods or services. In other words, deciding authorities are required to examine whether/not the mark is so widely known to the general public, that its use for any other good/service would likely indicate a connection between the two. Beyond its erstwhile 200 million user base in India (as per 2020 figures), TikTok is widely known as a video-sharing application enjoying mass appeal due to its entertainment value. Is the Court then implying that the future launch of any goods and services with the mark “TikTok” would not raise doubts/confusion regarding their connection with the social media application? It’s difficult to wrap one’s head around such logic!
In this light, we must ask: in exercising their powers under Rule 124, can Courts place moral considerations above explicitly stated objective factors? To what extent does the legislative design of Section 11(6) permit over-reliance on one single “fact” (here, the transient ban on the application) in the determination of the “well-known” status for a trademark?
Lastly, the Bombay HC deemed the Assistant General’s consideration of material indicating morphing, cyber-bullying, and circulation of sexually explicit content on TikTok as a “relevant factor” for the purpose of Section 11(6) of the Act. It extended similar treatment to concerns surrounding data privacy raised by the Assistant General. However, applications such as WhatsApp and Instagram are susceptible to similar challenges of questionable data privacy, sharing of morphed images. In fact, Instagram launched Reels to compete in the short-form content market against TikTok globally, and acted as its post-ban substitute in India. These factors have not precluded the grant of the “well-known trademark” status to both applications. The inconsistencies in judicial interpretation of Section 11(6) raise concerns for brand-owners.
Concluding Remarks: Is the Court Putting the Cart Before the Horse?
TikTok’s application to seek recognition as a “well-known trademark” soon after being banned in India may be a questionable business decision. However, the proceedings before the Bombay High Court have opened a can of worms – in interpreting the phrase “any fact” in Section 11(6) on the grounds of subjective morality over objective considerations and evidence, the Court has prompted several questions. Why did the impugned order’s reliance on Section 9, instead of Section 11, not merit its setting aside? What factors guide the contours of the phrase “any fact” in Section 11(6) – can they be devoid of the legislative intent behind the grant of the “well-known trademark” status, and solely depend on the Registrar’s subjective interpretation? While it continues to wait for recognition as a “well-known” mark in India, TikTok has surely become a well-known face of controversy for the general public.
The author would like to thank Swaraj and Praharsh for their comments and insights.