The protection available to well-known trademarks under Indian trademark law extends beyond the goods and services for which such marks are registered, subject to Section 11(2) of the Trade Marks Act, 1999. However, an important issue is whether a trademark proprietor must first obtain formal recognition of its mark as well-known under Rule 124 of the Trade Marks Rules, 2017, before opposing the registration of a similar mark for dissimilar goods or services.
The Delhi High Court examined this issue in Columbia Pictures Industries, Inc. vs Registrar of Trade Marks & Anr. [C.A.(COMM.IPD-TM) 44/2025], and clarified that a prior declaration of well-known status is not a mandatory requirement for invoking Section 11(2) in opposition proceedings.
Background of the Case
Columbia Pictures Industries, Inc. (the appellant), an American film production company, is the proprietor of the trademark GHOSTBUSTERS, associated with its internationally recognised film franchise first released in 1984. The first film was released in India in 1985, followed by several sequels, television productions and merchandise bearing the mark. The Appellant also holds registrations for GHOSTBUSTERS in India in Classes 9, 41, 25 and 28.
The dispute arose when respondent no. 2 applied for registration of the mark GHOST BUSTER in Class 5 on December 1, 2020, covering pharmaceutical, veterinary and other related preparations. The appellant opposed the application, alleging that the impugned mark was nearly identical to its earlier trademark and that its adoption would take unfair advantage of the goodwill and reputation associated with GHOSTBUSTERS.
The Registrar of Trade Marks rejected the opposition by an order dated April 16, 2025, on the ground that the rival goods belonged to different classes and the Appellant had neither registration nor established use of its mark in Class 5. The Registrar also accepted the explanation that GHOST BUSTER had been independently adopted to describe a product used to remove impurities responsible for ‘ghost peaks’ in High Performance Liquid Chromatography (HPLC) analysis. Aggrieved by the decision, the appellant preferred an appeal before the Delhi High Court.
Contentions of the Parties
The appellant argued that the Registrar had failed to examine its claim that GHOSTBUSTERS was entitled to protection as a well-known trademark under Section 11(2) of the Act. It was submitted that the mark had acquired substantial reputation through decades of commercial use, film releases, promotional activities, merchandising and registrations in India and other jurisdictions. Therefore, the difference in the nature of goods or their classification could not, by itself, justify the registration of a nearly identical mark.
The appellant also contended that Section 11(2), read with Section 11(5) and Rule 43 of the Trade Marks Rules, 2017, permits a trademark proprietor to establish the well-known character of its mark during opposition proceedings, without first obtaining a separate declaration under Rule 124.
The Registrar defended the rejection, maintaining that Rule 124 provides a dedicated procedure for obtaining well-known trademark recognition through an application in Form TM-M, payment of the prescribed fee and submission of supporting evidence. It was argued that allowing such recognition through opposition proceedings would circumvent this procedure. The Registrar also held that the appellant had failed to establish sufficient reputation among consumers of the specialised pharmaceutical and scientific products covered by the impugned application.
Court’s Analysis
The primary issue before the Court was whether a prior formal declaration of well-known status was necessary for invoking Section 11(2) of the Act. The Court examined Section 11(2), which restricts registration of a trademark identical or similar to an earlier well-known trademark, even in respect of dissimilar goods or services, where use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier mark.
It was held that Section 11(2) does not require an earlier trademark to have been formally declared well-known before its proprietor can seek protection under that provision. The Court observed that the statutory language refers to a mark that is well-known in India and not necessarily one already declared well-known or included in the Registrar’s list of well-known trademarks.
The Court also referred to Explanation (b) to Section 11, which includes within the meaning of an earlier trademark a mark that was entitled to protection as a well-known trademark on the relevant date. It was observed that the expression “entitled to protection” cannot be interpreted as requiring a prior formal declaration.
The Court further examined Section 11(5), which allows the proprietor of an earlier trademark to oppose registration on grounds specified under Section 11(2). The provision does not restrict this right to proprietors of trademarks already declared well-known. This interpretation was also supported by Rule 43 of the Trade Marks Rules, 2017, which contemplates opposition based on an earlier trademark claimed to be well-known.
Scope and Application of Rule 124
Reviewing the role of Rule 124, the Court observed that the provision was introduced under the Trade Marks Rules, 2017, providing a separate mechanism for seeking determination of a trademark as well-known before the Registrar. The Court noted that prior to the introduction of Rule 124, recognition of well-known trademark status could be sought through adversarial proceedings, including infringement suits, passing-off actions, cancellation and opposition proceedings. The subsequent introduction of Rule 124 did not eliminate the protection already available under Section 11(2).
The Court also differentiated between the expressions “well-known trademark” under Section 11(2) and “determined to be well-known” under Section 11(8). The law used different terms, indicating that a formal decision was not required before invoking Section 11(2). Therefore, the Court rejected the contention that an opposition could not succeed without a prior declaration under Rule 124. It was held that the Registrar is empowered to examine whether an earlier trademark qualifies as well-known during opposition proceedings by considering the evidence placed on record.
For this, the Registrar must examine the factors specified under Sections 11(6) and 11(7), read with the definition of a well-known trademark under Section 2(1)(zg). These include the extent of recognition among public, duration and geographical extent of use, promotional activities, trademark registrations and the record of successful enforcement of trademark rights. The Court relied on the Madras High Court’s decision in Lego Juris A/S v. Gurumukh Singh and Anr., which recognised that an earlier trademark may qualify for protection under Section 11(2) even without a prior formal declaration of well-known status.
Decision of the Court
The Court found that the Registrar had failed to examine the appellant’s claim under Section 11(2) and had restricted its analysis primarily to the dissimilarity of goods and their classification. It was held that the Registrar was required to consider the evidence submitted in support of the alleged well-known status of GHOSTBUSTERS before determining whether the impugned mark could be registered.
The Court also noted that the Registrar had failed to examine the allegations of bad faith adoption, including the earlier opposition proceedings before the USPTO for an application for GHOST BUSTER filed by a sister concern of respondent no. 2.
Therefore, by its judgment dated July 6, 2026, the Court set aside the Registrar’s order dated April 16, 2025, and remanded the matter for fresh consideration. The Registrar was directed to examine the appellant’s claim of well-known trademark protection and allegations of bad faith, along with the rival contentions and supporting evidence, within 3 months after providing an opportunity of hearing to both parties.
Conclusion
The judgment clarifies the relationship between Rule 124 of the Trade Marks Rules, 2017, and the protection available to well-known trademarks under Section 11(2) of the Trade Marks Act, 1999. A decision under Rule 124 is not a requirement for a trademark holder to oppose the registration of an identical or similar mark for dissimilar goods or services.
The decision lays down that the right to invoke Section 11(2) depends on whether the earlier trademark satisfies the requirements for well-known status, rather than whether it has already received formal recognition. It also requires the Registrar to examine claims of well-known status and the supporting evidence during opposition proceedings instead of rejecting such claims solely on the basis of differences in goods, services or trademark classes.
Authors: Manisha Singh and Shivi Gupta