'Ghostbuster' row: Trademark need not be formally declared well-known to get cross-class protection, says Delhi HC

A plea by the producer of the American film 'Ghostbusters' against a company's move to get the name 'Ghost Buster' registered as a trademark in India for certain chemical products recently led the Delhi High Court to make pertinent observations on cross-class trademark protection [Columbia Pictures Industries Inc v. Registrar of Trade Marks & Anr]..The Court held that a trademark need not have been formally declared a well-known mark before its proprietor can seek protection against the registration of an identical or similar mark for dissimilar goodsJustice Jyoti Singh said the Registrar of Trade Marks can determine whether an earlier trade mark qualifies as being a well-known trademark under Section 11of the Trade Marks Act, 1999, during opposition proceedings.“There is no statutory prescription under Section 11(2) that the proprietor of an earlier mark must first obtain a declaration of ‘well-known trademark’ status before invoking the provision in opposition proceedings,” the Court held..The Court passed the ruling while dealing with an appeal by Columbia Pictures Industries against the registration of GHOST BUSTER for pharmaceutical, veterinary and sanitary preparations in Class 5.Columbia Pictures had opposed the registration by relying on its GHOSTBUSTERS trademark, associated with the popular film franchise. The Registrar rejected the opposition in April 2025.The Registrar reasoned that Columbia Pictures had registered GHOSTBUSTERS only Classes 9, 25, 28 and 41, and did not have any registration or evidence of use of the mark for goods falling in Class 5.The High Court found that the Registrar had failed to examine Columbia Pictures’ case under Section 11. The provision protects well-known trademarks against identical or similar marks even when the rival goods or services are dissimilar..The Court rejected the argument that Columbia Pictures should first have secured a formal declaration of GHOSTBUSTERS as a well-known trademark, either from a court or by following the procedure under Rule 124 of the Trade Marks Rules, 2017.It explained that Section 11(2) only requires the earlier mark to be well known in India. The Registrar can determine this question by examining the factors under Sections 11(6) and 11(7), including the duration and extent of its use, promotion, recognition among the relevant public, registrations and enforcement history.“The right to oppose registration under 11(2) thus arises from the well-known nature of the earlier mark and is not dependant on its formal declaration as a well-known mark,” the July 6 judgment said..Justice Singh found that the Registrar had focused solely on the dissimilarity between the rival goods without examining the evidence produced by Columbia Pictures regarding the reputation of GHOSTBUSTERS.“Having travelled on the wrong path, [the Registrar] reached the wrong destination,” the Court held..The Registrar had also failed to consider the allegation that the newer mark, GHOST BUSTER, was adopted in bad faith. Columbia Pictures claimed that a sister concern of the applicant had earlier sought registration of the same mark in the United States but abandoned the application after opposition.The Court proceeded to set aside the Registrar’s decision and remanded the matter for fresh consideration within three months. It clarified that it had not declared GHOSTBUSTERS a well-known trademark or expressed any opinion on the merits..Senior Advocate Satvik Varma instructed by a team from AZB & Partners at Delhi comprising Advocates Akhilesh Rai, Sugandha Bhatia, Parth Agrawal, Shantanu Parmar and Balram, represented Columbia Pictures..Central Government Standing Counsel Nidhi Raman, along with Advocates Om Ram and Nikita Singh, appeared for the Registrar..[Read Judgment]