In a recent decision, the Bombay High Court denied the status of a well-known Trademark to TikTok. TikTok’s application under Rule 124 of the Trademarks Act, 2017, was declined, despite its global recognition, on the grounds of a ban imposed on it for being “prejudicial to the sovereignty and integrity of India” under the Information Technology Act, 2000.
TikTok argued that the decision rejecting its application for “well-known” Trademark status was bad in law, for being based on Section 9 of the Trademarks Act (pertaining to the absolute grounds for refusal of registration), which holds no relevance in determining well-known trademark under the Act. The company further argued that the order failed to discuss the relevant factors enumerated under Section 11(6) of the Act, which are essential to be considered while determining whether a mark is well known, thus deserving an added layer of protection.
The Registrar maintained that the government-imposed ban on TikTok constituted a relevant factor under Section 11(6) of the Act, which empowers the Registrar to consider “any fact which he considers relevant” in determining well-known trademark status. He further asserted that the list of factors enumerated in the section was illustrative and not exhaustive, thus providing discretionary powers to the Registrar to consider any other relevant fact that he deems relevant.
The Bombay High Court, comprising Justice Manish Pitale, partly affirmed the decision of the Registrar. The court held that while the Registrar’s reliance on Section 9 of the Act for determining well-known status was erroneous, it is not sufficient to set aside the order in light of the powers granted to the Registrar to consider any fact which he deems relevant in determining the well-known status of a trademark. The Court acknowledged that considerations such as data privacy, national security, and allegations of cyberbullying could be treated as relevant factors within the ambit of that provision.
Relevant Legal Provisions
Section 2(1)(zg) defines well-known trade mark as-
A “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
Moreover, section 11 (6) of the Trademarks Act, 1999 provides a list of relevant grounds for the refusal of registration of a trademark. The introductory wording of the provision provides that 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.
Furthermore, as per section 11(9) of the Trademarks Act, 1999, the fact of whether a trademark has been used in India shall not be required by the Registrar as a condition for determining whether a trademark is a well-known trademark.
Judicial Recognition of Well-Known Marks Despite Legal Bans
In this case, although the entry of Gillette’s trademark, “7 O’clock”, was prevented in India due to import restrictions, the Hon’ble Bombay High Court nonetheless granted well-known status to the mark when the defendants began manufacturing toothbrushes under the same mark. Based on Section 11(9) of the Trade Marks Act, 1999, the Court rejected the defendant’s argument that the absence of 7 O’CLOCK goods in the Indian market for decades entitled them to use the mark. The Court held that:
“The goodwill is not limited to a particular country because in the present days, the trade is spared all over the world and the goods are transported from one country to another very rapidly and on extensive scale. It was observed that even when the manufacturer suspends their business activities in a country for short duration due to legal ban or import restrictions it does not destroy the reputation or goodwill already acquired.”
In this case, although the plaintiff’s magazine Playboy, which catered to a male audience and featured sexually aggressive material, was banned in India, the Court nonetheless granted well-known mark protection when the defendants launched a magazine titled Playway, deceptively similar in both name and content. The Court rejected the defendant’s claim that a legal ban disallows protection to the trademark, and emphasised that non-use of the mark does not negate its well-known recognition, and held that:
“Since plaintiff’s magazine has no circulation in India because of legal ban and import restrictions nor is India its country of origin the question of infringement of trade mark does not arise has no substance as now-a-days the reputation or the goodwill of the brand or tradename is not confined to national borders. Tradename or brand that acquires international reputation does not confine in the four-walls of its house. It is immaterial if there is a legal ban or import restrictions of its sale or circulation in other countries. Temporary or even permanent legal interruption or suspension or cessation of business or sale or circulation in one country or area does not confer a right upon any person to adopt the same tradename or invent deceptively similar name as substantial reputation of tradename or a brand earned over the years is not wiped out. One of the significant attributes of international tradename or brand is the influence over the mind of people and their common belief as to its origin or source.”
In this way, in contrast to the TikTok case, both of these precedents emphasise the core principle laid down in section 11(9) of the Act, that well-known status is not contingent upon active commercial presence or use in the domestic market, irrespective of local market restrictions.
Critical Analysis
I. Trademark Law vs. Policy Objectives: A Legal Tension
The decision is initiated by reiterating a fundamental legal tenet: registration of a trademark under the Trade Marks Act, 1999, is distinct from the actual use of the product or service in India. In doing so, the court concedes that TikTok’s registration remains legitimate and thus benefits from the fundamental safeguards connected with registered marks. However, the court makes a clear differentiation between basic trademark protection and well-known status recognition, the latter being subject to discretion rather than entitlement.
This brings about a key paradox: while the Trade Marks law acknowledges cross-border reputation, and the judiciary has historically upheld transborder goodwill, the High Court considers regulatory restrictions (such as prohibitions via the Information Technology Act) as a valid “relevant fact” under Section 11(6). This conceivably blurs the line between domestic governance measures with intellectual property assessment and may establish a precedent where sociopolitical factors could constrain the acknowledgement of Intellectual Property Entitlements.
II. Analysing Legal Precedents on Trademark Protection for Banned Brands
A close inspection of the ruling reveals a notable deviation from the conventional legal stance on transborder reputation. In prior rulings, the constraints that barred products like 7 O’CLOCK razors or PLAYBOY magazines from entering the Indian marketplace originated from trade policy or moral regulation. However, in the present case, TikTok reflects a divergent scenario, where no actual use of the app does not arise from unbiased policy limitations but from an unfavourable governmental measure, based on serious accusations concerning national security, data privacy, and sovereignty. Thus, instead of independently evaluating TikTok‘s eligibility for a well-known mark status, under the objective factors laid down in Section 11(6) of the Trade Marks Act, the Court permitted the government’s ban to override the statutory scheme, indicating a deviation from past rulings.
III. Implications Of “Well-Known” Recognition Denial Based on Government Bans
By ruling that public policy interestsunder non-trademark legislation (like the IT Act) could affect decisions under Section 11(6), the Court allows discretion, subjectivity, and judicial inconsistency into a domain that ideally should remain objectiveand rule-bound. This reasoning could set a precedent where the recognition of a well-known trademark status could become influenced by extraneous factors, such as international frictions, bans, censorship, or shifting regulatory outlooks.
The decision also gives rise to apprehensions about the identical treatment of all international brands. Would this logic extend to other global entities with sour diplomatic ties with India? If TikTok can be refused well-known status due to a ban, does this apply to Huawei, WeChat, or even apps from other countries if future bans are imposed? This obscurity could inhibit international trademark holders from investing in India, suspecting an unpredictable IP regime.
Conclusion
The Bombay High Court’s decision demonstrates a divergence from the precedents, with the legal discretion under Section 11(6) used to justify TikTok’s denial of well-known status rather than objectively examining its eligibility. Overreliance on the ambiguous wording “any fact” has broadened the Registrar’s discretion to cover policy concerns unrelated to trademark law. These dangers dilute the objective and predictable quality of well-known mark recognition, thereby discouraging global brands from seeking protection under India’s intellectual property structure. A more balanced and legally sound criterion is required to protect trademark rights from unjustified exclusions.
Authored by: Ms. Priya Sharma
Ms. Priya Sharma is a second-year B.A. LL.B. (Hons.) student at the Rajiv Gandhi National University of Law, Punjab. She has a deep and growing interest in Intellectual Property Rights (IPR) law, particularly in understanding how innovation and creativity can be protected in a rapidly evolving digital landscape. Her academic journey so far has been marked by research, writing, and engagement with legal developments in IPR, and she aspires to contribute meaningfully to this dynamic field through both scholarship and practice.
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