In our articles, we often explore contentious topics like confusingly similar trade marks. However, in this piece, we are taking a different approach and turning our attention to something very interesting regarding 'well-known' trade marks in India.
Well-known trade marks in India
An article that was published in India recently makes for very interesting reading. The article deals with the issue of trade marks that are likely to be regarded as 'well-known' in India, as well as the attitude of India to well-known trade marks.
Here are some points worth noting:
- Determination: In India, any person can request the Registrar of Trade Marks to determine if a trade mark is well known. A statement of case needs to be be submitted, together with evidence such as proof of use (invoices, sales figures, market surveys), details of trade mark registrations or applications in India (if available) and abroad, annual sales turnover and advertising expenses, evidence of publicity and recognition (media coverage, awards, third-party articles), details of successful enforcement (court orders, Registrar's decisions recognising the mark as well-known) and copy of any judgment or order where the mark has been declared well-known.
- Documents: Once a request for a determination has been filed, the Registrar may request additional documents, he or she thinks are relevant.
- Objections: The Registrar has the right to invite the public to submit objections.
- A special list: If a trade mark is determined to be well-known, it is placed on a special list.
- Removal: A trade mark that has been entered on the list can, in appropriate circumstances, be removed from the list.
The TikTok case
TikTok Ltd applied for the inclusion of its registered trade mark TikTok in the list of well-known trade marks in India – it made this application under Rule124 of the Trade Marks Rules 2017. In its application, TikTok Ltd made a number of statements and claims:
- TikTok is a social media video application for creating and sharing short talent videos.
- TikTok was globally launched in 2017.
- TikTok is available in 155 markets and in 75 languages.
- TikTok has been immensely popular for many years. So much so that by 2019 it was 'one of the most downloaded apps surpassing Facebook, YouTube and Instagram'.
The 'banning' of TikTok
Despite the fact that TikTok is a registered trade mark in the Indian Trademarks Registry, the Registrar declined to add it to the list of well-known trade marks. The reason provided for this decision was that TikTok was 'banned' by the Government of India. In particular, TikTok was seen as being prejudicial to:
- the sovereignty and integrity of India;
- the defence of India;
- the Security of the State; and
- public order.
There was reference to the powers under the Information Technology Act, 2000 and associated rules.
The Bombay High Court
TikTok took the matter to the Bombay High Court, claiming that there had been a 'non-application of mind' (quaint!). The Bombay High Court handed down a judgment that dealt with the issue of the recognition of well-known trade marks.
Below is a summary of the court's findings:
- Not exhaustive: The Bombay High Court observed that the law allows
the Registrar to consider any relevant fact when evaluating applications for well-known status. This includes matters of public policy and constitutional values.
- Significant element: The High Court took the view that the Government of India's prohibition of TikTok, which had been enacted under the Information Technology Act and its associated Rules, was a significant element that had been considered by the Registrar.
- Public safety: There were concerns regarding public safety, which encompassed risks related to data security, occurrences of cyberbullying, and inappropriate content, as well as the location of TikTok's servers in China. All these factors played a role in the Government of India's decision to impose a ban under the Information Technology Act.
- The trade mark registration remains unscathed: The High Court acknowledged that TikTok remains a registered trade mark, which gives it statutory protection in India. However, recognition as a 'well-known mark' grants enhanced protection, and in light of the ongoing ban, elevation to well-known mark status was not appropriate. The use of the Constitution's preamble and public policy concerns was also justified given the national interest dimensions involved.
So what is really going on here? This is what an AI overview tell us:
"In 2020, India banned TikTok and dozens of other Chinese apps, citing national security and data privacy concerns after a deadly border clash with China. The government accused these apps of misusing user data and threatening India's sovereignty. At the time, TikTok had around 200 million users in India, making it the app's largest market outside China. The ban was widely supported domestically. After TikTok's removal, most users and creators migrated to alternatives like Instagram Reels and YouTube Shorts, though the unique culture of Indian TikTok was not fully replaced. The ban set a global precedent for digital sovereignty and security."
So yes, it's all politics. Well, politics and IP!
Although TikTok was unable to secure inclusion of its trade mark in the list of well-known trade marks, trade mark proprietors may nonetheless find this option appealing in India, particularly if the Indian market is significant to their business interests and they can actually provide evidence to justify that their trade mark is well-known.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
