Status at the Sovereign’s Pleasure- Analyzing the Bombay High Court’s Stance on Well-Known Marks

Introduction

In the competitive landscape of global intellectual property, there is a dangerous misconception among brand owners i.e. “well-known” status is a merit badge or an automatic reward for achieving a certain threshold of commercial popularity. The prevailing sentiment suggests that if a mark get the public consciousness via advertising spend and sheer scale, the law is duty bound to recognize its status as “well-known”. However, this point of view fundamentally misinterprets the true nature of trademark recognition.

In reality, the declaration of a mark as “well known” isn’t a vested right which exist by default, rather, it is a discretionary privilege granted by the State. The status provides extraordinary protection that supersedes normal product categories, and because of this it grants such a powerful monopoly, so it is inherently contingent upon the applicant’s strict alignment with public policy and compliances.

A watershed moment for this legal point of view arrived with the decision of Bombay High Court in the case of TikTok Limited v. Registrar of Trademark[1] (2025). In this case, the prime issue before the court was to decide whether a brand that is arguably a household name can be legally “well-known” even while its operation in prohibited under national security regulations. This judgement serves as a modern benchmark, proving that legal fame cannot overshadow legal compliance.

Defining the “Well-Known” Status:

The legal foundation for this research rests on Section 2(1)(zg)[2] of the Trade Marks Act, 1999, which defines a well-known mark by its resonance with a “substantial segment of the public”. Although Section 11(6) provides a roadmap for determining such a status but it doesn’t create any automatic entitlement[3].

This recognition is an ultimate shield against brand dilution and free riding on a company’s reputation as a declared well-known break the principle of speciality, granting the owner a powerful monopoly that prevents third-use across all 45 classes, regardless of whether the goods are similar. The law treats it as a discretionary privilege because a well-known declaration is a sovereign grant of an extraordinary monopoly.

Case Analysis: TikTok Limited v. Registrar of Trade Mark

In the case of TikTok Limited v. Registrar of Trademarks (2025), the Bombay High Court addressed a contradictory legal reality i.e. can a brand be legally “well-known” if it is legally persona non grata? The case began when TikTok Limited sought a writ of mandamus to compel the Registrar to declare its mark well-known, citing its massive historical user base and global brand equity.

The core tension in the petition was the clash between commercial fact and regulatory fiction. TikTok argued that its mark satisfies every statutory criterion under Section 11[4] of the Trade Marks Act, 1999, it was a household name with undisputed trans-border reputation. However, the Registrar of trademark countered that the mark’s status couldn’t be viewed in isolation. Since 2020, the Indian government had banned the application under Sec 69A [5]of the Information Technology Act, 2000, citing threats to national security, data sovereignty and public order.

The High Court’s refusal to grant the declaration was based on three critical pillars:

1. Regulatory Harmony: The High Court held that the Trade Marks Act cannot operate in an isolation, indifferent to other sovereign mandates. If the Ministry of Electronic and Information Technology (MeitY) deems a platform is a threat to the state, the judiciary cannot simultaneously grant that platform a special privilege or a monopoly under Intellectual Property law.

2. Public Policy as a Gatekeeper: The Court clarified an important point that the recognition of a well-known mark is a “discretionary privilege”. Since such a declaration carries the weight of the State’s endorsement of a brand’s status. So, granting it to a banned company would create an unsustainable legal absurdity.

3. The Absence of a “Vested Right”: Most importantly, the Bombay High Court held that while an entity has a right to apply for a trademark, it has no vested to be declared well-known. This status of well-known is subject to Public Policy.

The judgement established that a banned status inherently contradicts the public interest requirement inherent in well-known recognition.  To protect a mark across all classes is to protect its goodwill, however, if the state has determined that the entity’s presence is subject to public interest, no such legal goodwill could exist for the purpose of statutory declaration.

The Myth of “Vested Right”

The assertion that intellectual property is a “right” frequently to lead to flawed presumptions that once certain criteria are met, the duty of state to recognize it becomes ministerial.

From a constitutional point of view, trademarks are categorized as “incorporeal property”. As per Article 300A[6] of the Indian Constitution, no person shall be deprived of their property save by the authority of law. But this right isn’t absolute, it is subject to “reasonable restrictions” in the interest of the general public. While a proprietor may have a vested right to their registered trademark in a specific class, the elevation of that mark to “well-known” status is a different legal animal, it is an expansion of property rights that the State can withhold if it conflicts with broader social goals.

Under Section 11 (6), the Registrar evaluates the “10 factor test”, which includes the analysis of extent of knowledge, duration of use, and record of successful enforcement. Crucially, the Bombay High Court clarified that even if an applicant ticks every checkbox, still the Registrar holds a residual discretionary power. The reason for existence of this discretion is because, a well-known declaration is a potent legal tool which impacts the rights of every other trader in a country. If the mark’s existence or the proprietor’s conduct is violative of national policy, the technical metrics of fame become irrelevant.

The transition from a standard trademark to a well-known trademark often requires invoking the court’s extraordinary jurisdiction. In such a case, the equitable maxim “He who seeks equity must come with clean hands” applies. So, an entity which is in a state of regulatory non-compliance or has been flagged for violating the data sovereignty can’t demand a “privileged” status. In the opinion of court, the privilege of legal frame is reserved for those who respect the legal order of the forum in which they seek protection.

Public Policy and Regulatory Compliance as Essentials:

TikTok’s counsel leveraged Section 11(9)[7] of The Trade Marks Act, 1999 to argue that application’s present unavailability due to the government ban should be irrelevant, as Section 11(9)(i) and (v) specify that the Registrar cannot require a mark to be “used in India” as a prerequisite for recognition. However, the Bombay High Court clarified that while Section 11(9) prevents the Registrar from setting these as rigid conditions, it does not strip the Registrar of the power to consider the nature and cause of that non-use. The Court reasoned that the absence of use in this case was not a mere commercial lacking, but a result  of an executive ban based on the national sovereignty. Thus, while Section 11(9) ensures that foreign marks aren’t unfairly penalized for a lack of local presence, it cannot be used as a “legal shield” to bypass the fundamental requirement that the mark’s recognition must not contravene public policy.

Historically, trademark disputes cantered on “likelihood of confusion” or “deceptive similarity”. But, with the passage of time the focus has expanded to include the integrity of the entity behind the mark. When a platform is flagged for data privacy violations or recognized as a threat to national security, these regulatory failures negatively affect its IP standing. The courts refusal to grant well-known status shows that the State cannot be expected to protect the equity of a brand for an entity to which it has simultaneously prohibited from operating due to systemic risks.

Such an evolution reinforces the principle of Sovereign Authority. The intellectual property regulations, such as the Trade Marks Act, are subordinate to the overarching mandates of the Constitution of India. A trade restriction or an executive ban act as a “hard stop” for discretionary privilege for Intellectual Property. So, the hierarchy is clear i.e. regulatory compliance is the bedrock upon which the privilege of the trademark fame is built.

Conclusion

The judgement in TikTok Limited v. Registrar of Trademarks serves as a profound reminder that commercial fame doesn’t provide a “full access pass” to bypass the national laws. The Bombay High Court has solidified the principle that well-known status is an earned privilege, not an inherent right by affirming that the Registrar can look beyond the technical metrics of public recognition to consider matters of national security. It can be observed that the final thought is clear i.e. brand equity is a fragile asset in the eyes of law if it is built upon a foundation of regulatory non-compliance. In the hierarchy of legal protections, the sovereign interest and public policy will always act as the ultimate gatekeepers. In the era of digital age where the data is as important as a trademark, the “clean hands” doctrine will increasingly become the standard by which the world’s most famous brands are judged. Therefore, the recognition is no longer just about being ‘known’ , it is about being legally compatible.  

Author: - Priyanshu Kalosiya, 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.

[1] TikTok Limited Faheem Ahmad Constituted Attorney of TikTok Limited v. The Registrar of Trade Marks Mumbai & Anr., 2025 SCC OnLine Bom 2323.

[2] Trade Mark Act, 1999, § 2, No. 47, Acts of Parliament, 1999 (India).

[3] Trade Mark Act, 1999, § 11(6), No. 47, Acts of Parliament, 1999 (India).

[4] Id.

[5] The Information Technology Act, 2000, § 69A, No. 21, Acts of Parliament, 2000 (India).

[6] India Const. art. 300A.

[7] Trade Mark Act, 1999, § 11(9), No. 47, Acts of Parliament, 1999 (India).