Under Rule 124 of the Trade Mark Rules, the Petitioner filed an application for inclusion of the TikTok mark in the list of well-known trade marks. However, the application was rejected on the ground that Tiktok was banned in India and had been found to be controversial by the Government of India. The Petitioner argued that elaborate evidence was placed on record to substantiate the inclusion of the mark in the well-known list, and that the mere banning of an application, which is a transient situation, cannot be the basis for refusing such an application. Additionally, there was no discussion regarding the factors to be considered for determining whether a mark qualifies as well-known. The Court held that the statutory factors are not exhaustive. Thus, the Registrar is entitled to take into account “any fact which he considers relevant” for determining whether a trade mark qualifies as well-known. The TikTok ban by the Government of India was a relevant factor that the Registrar was justified in considering. Further, it was observed that the ban was imposed in the backdrop of data privacy concerns, particularly due to the application’s servers being located in China. While the mark is already a registered trade mark in India, the inclusion in the list of well-known marks provides additional protection. However, in light of the TikTok ban, the Court found the refusal to be justified.

Source: TikTok Limited v. The Registrar of Trade Marks Mumbai & Anr. [Comm. Mis. Petition NO. 10/2024]