Defensive Trademark Registrations and the Risk of Cancellation: The TikTok Non-Use Decision in Perspective

Introduction

In recent years, trademark owners especially large corporations and online companies have increasingly shown reliance on defensive trademark registration as a means to secure their possible future commercial interests. These trademark registrations are usually done not with the intention to utilize them commercially in the near future, but to reserve the right to prevent other individuals or companies from using similar trademarks defensively, it becomes a serious legal issue when trademarks are registered and remain unused for a long time. The trademark act in India does not support registration as an unlimited right. There are specific guidelines mentioned in the Trade Marks,1999 to ensure that the rights to the trademark are enjoyed in accordance with its commercial usage.

The court decision of TikTok Ltd. v. Registrar of Trade Marks (Mumbai) offers an interesting example of how these guidelines may be applied. The decision considers trademark rights that may be asserted despite lack if use, mainly in cases where registration is apparently made a part of a defensive strategy or speculation regarding future commercial activity by others The decision gains importance in the context of digital and technology-driven businesses, where brand valuation often precedes actual market deployment.

This blog analyses the TikTok non-use cancellation decision to explore the legal risks associated with defensive trademark registrations under Indian law. It seeks to assess the reasoning adopted by the Registrar and to examine the broader implications of the decision for trademark portfolio management, enforcement strategies, and future filings by businesses operating in fast-evolving commercial environments.

Concept of Defensive Trademark Registrations

Defensive trademark registrations refer to the practice of securing trademark protection for a mark without its immediate or active commercial use, primarily as a preventive measure. Such registrations are typically undertaken to block third parties from adopting identical or deceptively similar marks, to safeguard potential future business plans, or to preserve exclusivity in related or anticipated fields of activity. In sectors characterized by rapid innovation and intense competition, trademark owners often view defensive filings as an essential component of brand protection strategy. From a commercial standpoint, defensive registrations are not inherently illegitimate. Businesses frequently invest significant resources in brand development, market research, and strategic planning before formally launching goods or services under a particular mark. This is especially relevant when considering digital and technology companies, which launch their brands even before their market execution.

This blog undertakes an evaluation of the decision regarding the cancellation of the decision of non-use in the context of TikTok in order to identify the legal implications of defensive registrations within the Indian Trademark Law system. Additionally, this blog aims at evaluating the implications of the decision for the management of trademark rights in the modern business landscape.

Notion of Defensive Registrations of Trademarks

Defensive Trademark registrations are essentially those wherein the trademark protection for the mark is acquired without immediate commercial use, chiefly with the object of taking preventative action. Generally, these actions are carried out in order to ensure that no other individual/entity does not use the same/similar mark. In industries that are known for their fast-paced innovation process and stiff competitiveness, it is common for the owners of trademark actions are not necessarily an unscrupulous activity. In most instances, firms spend considerable time and resources in the development of their trademark branding.

Under these kinds of situations, early registrations can be registered as an effort to protect goodwill anticipating future use. This scenario can be commonly witnessed in tech firms and MNCs, especially when firms aim to build their brand even before stepping into the marketplace.

However, the TM law does not grant rights in mere abstraction. The right that is granted for a registered mark is based on its use as an identifier of origin in the course of trade. In cases where the TM has been allowed to lapse for a prolonged period of time without being used, its continued presence in the register can be deemed an unwarranted impediment for new market entrants. This is why most TM laws, including that of India, have set up requirements for marks that have been registered but have not been fully placed in commercial use.

The vulnerability of defensive trademark registration occurs when the registrant fails to show either usage of the mark or the bona fide intention to use it within a reasonable time. As a result, the registration of the trademark hoarding rather than trademark protection. The difference between rightful protection of brands and unlawful monopolization is central to cases of cancellation through non-use.

Thus, it is important to appreciate the concept and scope of defensive trademark registration to properly evaluate disputes relating to non-use. In the TikTok trademark case, it is possible to see how the applicable trademark regime examines defensive registration in relation to its scrutiny in disputes, in circumstances where commercial activity has not or has only just occurred in situations that are not trading in the true sense of the term.

Statutory Framework Governing Trademark Non-Use in India

The Indian Trademark system acknowledges that the value of a trademark resides in its actual use as a badge of origin in the marketplace, Through, registration, the trademark acquires statutory protection, but the same is NOT intended to create an indefinite monopoly unconnected with actual trade. This finds clarification under the Trade Marks Act,1999, which provides particular safeguards to ensure that trademark protection is actual trade activity.

Section 47 of the Act is the legal provision for the revocation of a registered trademark based on the ground of non-use. It considers two mailing scenarios: firstly, where trademark was registered without any bona fide intention on the part of the applicant to use the mark in connection with the relevant goods or services and secondly, where the trademark though with an intention to use when registered, has not been continuously used for a specific period after registration. The emphasis in both cases is on not allowing the continuance of protection for marks which do not fulfil their basic function in the marketplace.

The underlying legislative intent of Section 47 is snot punitive but corrective. Through the facilitation of rectification of the register, the provision purports to remove “deadwood” trademarks that are unnecessarily cluttering the register and/on hampering legitimate commercial activity by other. This serves a wider public interest goal of ensuring the trademark register is a record of active, enforceable rights and not speculative or dormant claims.

The Indian courts and the Trade Marks Registry have always been interpreting the provision of non-use with the aforesaid objective in mind. Although there may be valid commercial reasons and/on reasonable excuses in the case of the venture in question, mere expressions of future plans or intentions in connection with the business are not sufficient in and by themselves. It shall be incumbent upon the registers proprietor to show either actual use or plausible reasons for non-use within the relevant statutory provision.

The legal framework surrounding non-use therefore, achieves a balance between securing the legitimate rights of trademark owners and ensuring that markets remain open. It is well appreciated that early filing could be part and parcel of brand management plans; however, such rights shall not be maintained indefinitely without genuine use. It is against this background that cases, including defensive registrations such as in the TikTok non-use cancellation action, are determined.

Background and Factual Matrix of the TikTok Trademark Dispute

The dispute in TikTok Ltd. v. Registrar of Trade Marks (Mumbai) arose in the context of trademark registrations obtained by TikTok Ltd. in India, which subsequently became the subject of rectification proceedings on the ground of non-use. What was at stake were registrations concerning marks of the “TikTok” brand, which, despite their global recognition, were said not to have been put to genuine commercial use in India within the meaning of the Trade Marks Act, 1999.

The cancellation action was begun on the basis that the marks had been registered for a substantial period of time without any use being made of the same, and were thus vulnerable under Section 47 of the Act. The applicant seeking rectification argued that the presence of such marks on the trademark register, unaccompanied by any evidence of use, constituted an unjustifiable restraint on bona fide trade. It was submitted that such registrations served primarily to be defensive fillings, rather than nay indication of origin of trade.

On the other hand, TikTok Ltd. sought to defend its retention of the registrations by relying on their business model, brand strategy, and any anticipated commercial use. In this case, the registrant highlighted the fact that in online platforms, branding and market presence can sometimes develop in ways that differ from more conventional brick-and-mortar businesses. The reasoning given was that mere lack of immediate or conventional utilization should not automatically constitute a barrier to rights in relation to marks in industry segments that strong technology and online engagement components. An assessment of this issue was conducted by the Registrar of Trade Marks, Mumbai. Here, the Registrar had to evaluate the extent to which the registration satisfied the requirements of actual use or the bona fie intention to use. In this process, the Registrar considered the nature of the evidence, the time reported for non-use, and the commercial environment. Indeed, the assessment did not merely concentrate on the issue of the registration but the contextual issue of continuing to fulfil their essential function.

This is the contextual setting that led to the legal discussion related to defensive trademark registration and its validity in the legal system of India. The dispute in TikTok, therefore, presented the Registry with a case to analyze the practical effect of non-use provisions, particularly in the context of well-known digitals trademarks, whose commercial approach may not necessarily fit the traditional definition of trademark use.

Well-Known Trademark Consideration in the TikTok Decision

The TikTok controversy highlighted a crucial issue relating to the interaction between well-known trademarks and non-use under trademark law. Although TikTok is an internationally recognized leading digital platform with enormous brand recall, the proceedings before the Registrar of Trade Marks demonstrated that international reputation does not ipso facto result in indefeasible trademark rights in India. The Trade Marks Act, 1999 grants special protection to well-known marks under Section 11(6)-(10) to prevent dilution, misappropriation, and unfair advantage by third parties. However, the approach followed by the Registrar in this case reinforced that well-known status does not insulate a registrant from the statutory use requirements under Section 47. The order held that reputation-based protection functions within the paradigm of infringement and opposition proceedings, while of the registration itself remains essentially moored to actual or intended use on the Indian market.

A key part of the reasoning in the TikTok case involved the difference between brand awareness and trademark use in commerce. The fact that a mark is well-known to Indian consumers through digital exposure or international media is insufficient to constitute “use” under the Act. The Registrar made it clear that well-known status cannot be used as a shortcut for providing real commercial activity in India. That interpretation is proving real commercial activity in India. That interpretation is consistent with the territorial approach taken by India’s trademark law, where rights are determined more by use in that country than by popularity elsewhere. Thus, the case highlighted the fact that multinational digital brands must demonstrate an actual connection with the Indian market if they would like to defend their registrations from non-use cancellations.

The significance of this decision, from a doctrinal point of view, is that it reinforces the carefully calibrated balance between protection for famous brands, on one hand and preservation of market fairness, on the other hand. If well-known status were allowed to override non-use provisions, large corporations could indefinitely block the register without meaningful domestic presence, thereby stifling competition and innovation by local businesses. This ruling also upheld the integrity of the trademark register as a record of active commercial rights rather symbolic claims to prestige-though even reputed global brands passed under the scanner of Section 47. It crystallizes that while well-known marks enjoy robust protection against imitation, their continued presence on the register is contingent upon compliance with India’s use-based trademark regime.

Legal Issues Arising from the TikTok Non-Use Proceedings

In the case of the TikTok trademark dispute, the principal legal issues that arose centered on the provisions for non-use in accordance with Section 47 of the Trade Marks Act, 1999. The main legal issue involved was whether the famous TikTok trademarks held by TikTok Ltd. could be deemed to be genuinely used in India or whether the trademarks had been registered for mere defensive or speculative interests. A first major legal issue was the determination of the meaning of “use”, the benchmark for registered in India. “Use”, according to the Trade Marks Act, use means the bona fide use of the mark in connection with the goods or services in respect of which the mark is registered. In the context of online portals, where the mere presence of the brand may anticipate the actual delivery of the goods, the question as to what would amount to sufficient “use” becomes quite problematic.

The second major issue was the justification for the delay in use. In this case, TikTok Ltd. told the court that its business model, together with its plans and brands, provided a justification for the lack of use of the marks within the Indian market for the given period. The legal issue, hence, became whether there could be a valid defense against cancellation based on commercial intent or proposed use in such circumstances.

Thirdly, the case shed light on the relationship between defensive registrations and public interest. Section 47 is in place to ensure that the register of trademarks is not merely filled with inoperative trademarks that hinder market entry for other traders. As such, the action necessarily involved the consideration of whether the preservation of the trademarks, in the absence of evidential use, would prejudice the interference with the market entry and/or use of similar trademarks by other traders. Finally, the action considered the burden of proof in the defense of lack of use. The party applying for the rectification has the prima facie responsibility for lack of use. The TikTok action again placed the spotlight on the standards of proof, especially in the modern digital/technology sector where use, in many senses, is hard to measure.

Together, these legal matters presented the parameters in which the Registrar of Trade Marks had to determine the validity of defensive registrations, the requirement for use, and the corporate intent in relation to the statutes. The above case, therefore illustrates how the section 47 operates as a restraining influence upon speculative or sleeping registrations while allowing proper commercial planning within the system of Indian Trademark

Relevance and Impact of the TikTok Non-Use Decision

The decision to cancel TikTok for non-use is of immense importance in the field of trademark practice in India, especially where a business relies on defensive registration strategies. Looking at the registrant’s commercial activity, the Registrar of Trade Marks again asserted that registration cannot automatically guarantee rights in perpetuity but, in fact, protection would depend upon use in commerce, as evidenced by the statutory scheme, or an intent to use.

One of the immediate relevancies of the decision is that it clarifies hoe defensive registrations are treated under Section 47. The proceedings make clear that marks obtained only to block competitors or preserve future brand options are subject to cancellation if unsupported by demonstrable commercial deployments. It underlines that one cannot use the technique of registration passively as a means of ensuring market control; there must be proactive use. The case underlines problems in applying traditional trademark doctrines to digital platforms. Technology-driven industries, where brand exposure may precede physical deployment or conventional sales, need registrants to fully document marketing, app launches, promotion campaigns, and anything else that can demonstrate a bona fide use. It reinforces the idea that even within innovative commercial contexts, businesses make sure brand strategy aligns with statutory obligations

From a practical point of view, the judgment acts as a word of caution for start-ups, multinational companies, online platforms applying for early trademark protection in India. It highlights the need for planning which included not just registration but also timely and evidentiary use. Businesses need to keep detailed records of commercial activity and/or promotional initiatives and the intention to use marks so that defensive registrations do not inadvertently trigger cancellation actions. The TikTok judgement also feeds into the wider debate about trademark register integrity and market fair play. The decision ensures market access for new entrants by making registrations accountable for non-use and prevents strategic mark accumulation without active use. Such an outcome balances the commercial interests of established brands with the public interest in a transparent and functioning trademark system.

In other words, the TikTok non-use cancellation case reiterates that trademark protection in India is conditional and use-based, not merely formal. It indicates that businesses and their legal teams must carefully plan defensive strategies, then actively put them into operation and substantiate them legally, especially within the fast-evolving regime of digital commerce.

Author: Kanishka Gautam, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

ENDNOTES

1.     Trade Marks Act, 1999 (India).

2.     TikTok Ltd. v. Registrar of Trade Marks, Order dated Apr. 25, 2023 (Registrar of Trade Marks, Mumbai).

3.     Jeremy Phillips, Trademark Use, 41 Int’l Rev. Intell. Prop. & Competition L. 267, 272–75 (2010).

4.     Dev Gangjee, Trademark Use and the Problem of Abandoned Brands, 4 Queen Mary J. Intell. Prop. 127, 134–38 (2014).

5.     World Intellectual Prop. Org. (WIPO), World Intellectual Property Report: Brands Reputation and Image in the Global Marketplace 89–92 (2017).

6.     Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, paras 18–21 (India).

7.     S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, paras 32–35 (India).

8.     Vishnudas Trading v. Vazir Sultan Tobacco Co., (1997) 4 SCC 201, paras 47–49 (India).

9.     Carlos Correa, Intellectual Property and Public Policy: Balancing Innovation and Access, 21 Eur. Intell. Prop. Rev. 135, 140–42 (2019).

10.  Mark D. Janis, Trademark Law in a Globalized Digital Economy, 57 Am. J. Comp. L. 601, 607–10 (2009).