In a recent order, the Bombay High Court dismissed a petition filed by TikTok Limited (“TikTok”) challenging an order of the Registrar of Trade Marks Registry, Mumbai (“Registrar”), refusing TikTok’s application for inclusion of the mark TikTok in the list of well-known trade marks. The Registrar had refused TikTok’s application on the basis of the ban imposed on TikTok’s application by the Government of India.
TikTok, on the other hand, argued that the Registrar’s order was passed without any application of mind, where the extensive material placed on record regarding TikTok’s rights were not even referred to in the order by the Registrar. It was TikTok’s case that mere banning of an application, which was done temporarily, cannot be the basis for refusing the well-known application. It was further argued that as per Section 11(9)(i) of the Trade Marks Act, 1999 (“Act”), to determine an application for inclusion of a trade mark in the list of well-known marks, it is not a required that “the trade mark has been used in India or not”.
The court acknowledged that while the Registrar did not rely on the correct provisions of the Act while refusing TikTok’s application, it has noted correctly that the Government of India exercised power under the provisions of the Information Technology Act and the Rules to put a ban on TikTok’s application in India. Further, the court observed that the factors to determine a mark as well-known laid down under Section 11(6) of the Act are merely illustrative and not exhaustive in nature and the Registrar can take into account “any fact which he considers relevant for determining a trade mark as a well-known trade mark”. Therefore, the court was of the opinion that the factor taken into consideration by the Registrar was relevant and is covered under the purview of Section 11(6) of the Act. The court opined that since TikTok’s application bearing the mark TikTok was banned in India, the mark cannot be included in the list of well-known trade marks. Accordingly, TikTok’s petition was set aside and the Registrar’s order refusing TikTok’s well-known application was upheld.