Columbia Pictures had used GHOSTBUSTERS in connection with its film franchise since 1984. The first film was released in India in 1985, and the franchise later grew through sequels, television productions, streaming, merchandise and further film releases. Columbia Pictures also held Indian registrations for GHOSTBUSTERS in Classes 09, 41, 25 and 28. It claimed that the mark had acquired substantial reputation through long use, publicity, merchandise, film releases and public recognition.<\/p>\n
Another party applied on 1 December 2020 to register GHOST BUSTER in Class 05 on a proposed to be used basis. The application covered pharmaceutical, veterinary and sanitary preparations and other goods falling in that class. Columbia Pictures opposed the application.<\/p>\n
The Registrar rejected the opposition. The order proceeded substantially on the basis that Columbia Pictures had registrations in Classes 09, 41, 25 and 28, but no registration or demonstrated use in Class 05. The Registrar also accepted the applicant\u2019s explanation that \u2018GHOST\u2019 referred to ghost peaks appearing during chromatography and \u2018BUSTER\u2019 described the product\u2019s function of removing impurities responsible for those peaks.<\/p>\n
Columbia Pictures appealed to the Delhi High Court.<\/p>\n
The Court first found fault with the manner in which the Registrar had approached the opposition. The Registrar had treated the difference in classes and goods as substantially determinative. According to the Court, that approach failed to address the very purpose of Section 11(2).<\/p>\n
Section 11(2) specifically dealt with a situation where the later mark covered goods or services dissimilar to those of the earlier trademark. If the earlier mark was well known in India, and use of the later mark without due cause would take unfair advantage of or cause detriment to its distinctive character or reputation, the fact that the goods fell in different classes could not by itself dispose of the opposition.<\/p>\n
The Court therefore stated that once Columbia Pictures had specifically invoked Section 11(2), the Registrar was required to consider that objection and decide it on the evidence. Failure to do so was described as a glaring error.<\/p>\n
The next issue concerned the need for a prior declaration of well known status. The Court rejected the argument that GHOSTBUSTERS had to be formally declared well known before Columbia Pictures could rely on Section 11(2). It drew attention to the language of the statute, which referred to an earlier trademark that was \u2018entitled to protection\u2019 as a well known trademark. The provision did not say that the mark must already have been \u2018declared\u2019 well known.<\/p>\n
In the Court\u2019s view, the real enquiry was whether the earlier mark satisfied the statutory requirements under Section 2(1)(zg), read with Sections 11(6) and 11(7). A prior formal declaration was not a statutory precondition.<\/p>\n
The Court also held that this question could be decided in opposition proceedings. Rule 43 itself contemplated an opposition based on an earlier trademark alleged to be well known. The Registrar could therefore consider evidence relating to recognition among the relevant public, duration and extent of use, promotion, registrations and enforcement while deciding whether the mark deserved such protection. Rule 124 was not the only route available for the purpose.<\/p>\n
The Court, however, did not itself declare GHOSTBUSTERS to be a well known trademark. It held only that the Registrar should have considered and decided the issue.<\/p>\n
The allegation of bad faith suffered from the same omission. Columbia Pictures had relied on earlier US proceedings involving a sister concern of the applicant. That entity had applied for GHOST BUSTER in 2019. Columbia Pictures opposed the application, which was later abandoned, and an order refusing it followed in January 2020. The Indian application for GHOST BUSTER was filed in December 2020.<\/p>\n
According to the Court, this contention and the accompanying material deserved consideration while deciding whether the Indian application had been made in bad faith. The Registrar\u2019s order had not dealt with it at all. The Court again stopped short of deciding that bad faith actually existed and directed the Registrar to consider the issue afresh.<\/p>\n
The findings of the Court are as follows:<\/p>\n
The following paragraphs are reproduced from the Court\u2019s order. Only PDF line wrapping and page break artefacts have been normalised; the wording has not been paraphrased.<\/p>\n
24. Plain reading of the impugned order shows that some of the crucial contentions raised by the Appellant in the opposition notice read with the evidence under Rule 47 of 2017 Rules and written submissions have not even been considered. There is absolutely no adjudication on the submission that Appellant's mark GHOSTBUSTERS is an earlier well-known trade mark under Section 11(2) and thus a nearly identical mark GHOST BUSTER cannot be registered as that would be detrimental to the character and repute of the mark GHOSTBUSTERS and the factum that rival goods were pharmaceutical products in Class 05 was irrelevant. In my view, non-consideration of this submission is a glaring error in the order and the defence that there is implied rejection of this ground is completely fallacious. Section 11(2) provides that a mark which is identical or similar to an earlier mark and is sought to be registered for goods or services which are dissimilar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the "earlier trade mark" is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. Therefore, once an opposition was filed by the Appellant claiming its mark to be an 'earlier mark' under Section 11(2), entitled to protection across classes, Registrar was obliged to consider the said ground of opposition as per law and take a view one way or the other. The impugned order shows that Respondent No.1 has not even referred to this ground, leave alone dealing with it, despite the Appellant taking this ground in the Notice of Opposition and the detailed written submissions and also filing overwhelming evidence to support the same and no plausible explanation is forthcoming even before this Court for this glaring omission, save and except, callously brushing aside the non-consideration of this ground of opposition by stating that there is implied rejection. Respondent No.1 was under a mandate to consider this issue as it had a significant bearing on determination of a crucial question whether the mark GHOST BUSTER could be registered for dissimilar goods in a different Class 05, for which Appellant does not have registration albeit being nearly identical to the registered mark GHOSTBUSTERS of the Appellant. Examination of the matter under Section 11(2) would have shifted the focus from the dissimilarity of goods, which is the sole ground in the impugned order to reject the opposition.<\/p>\n
26. Close look and analysis of the language of Section 11(2), leaves no doubt that the provision does not require or envisage the 'earlier trademark' to be a formally declared well-known mark. Sub-Sections 11(6) and (7) provide factors which are required to be considered for determining whether that trade mark is a well-known mark. Explanation (b) to Section 11 defines an 'earlier trademark' as a mark registered on the date of the application for registration of the trademark in question and 'entitled to protection as a well-known trademark'. Clearly, the phrase in Section 11(2) is 'mark is a well-known trade mark in India' and not 'the mark is a declared well-known mark and\/or included in the list of well-known marks by the Registrar'. This only means and connotes that the earlier mark qualifies the threshold requirement of Section 2(1)(zg) i.e., it has become well known to the substantial segment of the public which uses the goods or receives services in relation to which the mark is used and is likely to be taken as indicating a connection in the course of trade and is well known in India. The words "entitled to protection" in Explanation (b) are not without significance inasmuch as 'entitle' as defined in Black's Law Dictionary means 'to grant a legal right to or qualify for' and cannot be construed to mean 'declared'. Therefore, the enquiry under Section 11(2) is whether opponent's mark is substantially well known amongst the relevant segment and enjoys immense and extensive reputation in India and to test this, factors delineated in Section 11(6) and (7) are to be considered and the enquiry is not whether there is a prior formal declaration as a well-known mark. Had the legislature intended the earlier mark under Section 11(2) to be a declared well-known mark, the provision would have so stated expressly and in the absence of an express exposition to this effect, it is not open to the Court to substitute words in statutory provisions beyond what has been legislated.<\/p>\n
27. The central theme of Section 11(2) is the well known status and repute of the earlier registered mark and its protection so that the Register of Trade Marks does not include a later mark, which owing to its similarity\/identity, takes unfair advantage of or is detrimental to the distinctive character or repute of the earlier mark. 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, in my considered view. The legislative intent is clear from the common thread that runs in sub-Section (5), which provides that a trademark shall not be refused registration on the grounds specified in sub-Sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the 'earlier trademark' and does not require that the opponent should be a proprietor of a 'declared' well-known mark.<\/p>\n
29. The above position also finds support from Rule 43 of the 2017 Rules, which in respect of a Notice of Opposition or on an earlier right on which the opposition is based and provides that "where the opposition is based on an earlier trade mark which is alleged to be a well-known trade mark within the meaning of sub-section 2 of section 11[…]". The language of this Rule is also a pointer to and furthers the interpretation that opposition under Section 11(2) is not conditioned by declaration of a mark as a well-known and the registered proprietor of the earlier mark has only to satisfy through evidence that it fulfills all parameters under Sections 11(6) and (7) read 2(1)(zg) and is entitled to protection as a well-known mark. Any other interpretation would render the Explanation (b) and Section 11(5) as also the corresponding Rule, otiose. As rightly urged on behalf of the Appellant, legislature in its wisdom deliberately chose not to use the term "declared" since before the amendment to the Trade Marks Rules in 2017, whereby Rule 124 was introduced, the only way to seek a declaration of well-known trade mark was perhaps to engage in adversarial proceedings, such as law suits for infringement, passing off, cancellation, opposition, etc. Additionally, even in the definition of well-known trademark, legislature has consciously used the words "a mark which has become so to the substantial segment of the public", which only means a substantial segment of the public that patronizes the product\/service associated with the earlier trademark. The whole objective of the protection extended to a well-known mark is to ensure that a mark, which is similar\/identical, does not dilute its reputation and the character. Furthermore, legislature has consciously used two distinct terms, i.e. "well-known" trademark in Section 11 (2) and "determined to be well known" in Section 11 (8). The golden rule of interpretation stipulates that words and phrases in a statute must be given their ordinary meaning. Therefore, the contention of Respondent No.1 that in the absence of a formal declaration of the mark GHOSTBUSTERS, opposition by the Appellant was misconceived, is rejected and it is held that 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. Section 11(2) merely requires that the earlier mark is well-known in India and the Registrar is empowered to determine whether the mark is well-known by considering factors under 11(6) and (7), including duration and extent of use, extent of promotion, recognition among relevant public, registrations and record of enforcement etc. by looking into evidence led by the opponent.<\/p>\n
30. It needs no gainsaying that if Appellant is able to satisfy that its mark GHOSTBUSTERS meets the required threshold under Section 2(1)(zg) read with sub-Sections (6) and (7) of Section 11 it shall be entitled to oppose registration of nearly identical mark GHOST BUSTER under Section 11(2) despite the dissimilarity of rival goods and difference in the classes. However, be it noted at the cost of repetition that the Respondent No.1 did not even delve into this aspect of the matter and focussed its attention only on the dissimilarity of goods and classes and thus having travelled on the wrong path, reached the wrong destination. Learned Senior Counsel for the Appellant took pains to demonstrate that Appellant made extensive and specific averments and also filed plethora of documents in support thereof to show that the mark GHOSTBUSTERS is a well-known mark within the meaning of Section 2(1)(zg) as it fulfills the criteria laid down in Section 11(6), but regrettably, the impugned order is silent on this aspect. Hence, Ms. Raman's reliance on the judgements in N. Ranga Rao (supra) and Apollo Hospitals (supra), to contend that no evidence was led under Section 11(6), is also misplaced.<\/p>\n
31. Appellant also urged before Respondent No.1 that the adoption of the mark GHOST BUSTER by Respondent No.2 was in bad faith for two reasons. Firstly, the reputation of the mark GHOSTBUSTERS was so well known that the adoption was only to take unfair advantage of Appellant's GHOSTBUSTERS as there could be no other reason to adopt unique name coined by the Appellant. Secondly, Respondent No.2 was well aware of Appellant's rights in the mark inasmuch as its sister concern Welch Materials Inc. (Welch) filed an application on 04.06.2019 before the USPTO bearing No.88458465 for registration of the mark GHOST BUSTER, which was opposed by the Appellant. On 14.10.2019, Notice of Opposition was served on the attorney of Welch and soon thereafter the application was abandoned. Owing to the no contest by Welch, Appellant filed notice of motion for default judgment on 02.12.2019 and on 07.01.2020, USPTO passed an order refusing the application filed by Welch. Despite this significant proceeding and order, Respondent No.2 filed the application in question in India on 01.12.2020 on 'proposed to be used' basis. However, even to this extent there is not a whisper in the impugned order. Appellant is also right in its submission that Respondent No.2 does not contest and\/or abandons prosecution when it finds it has no defence as even in the present proceedings, there was no representation despite service and Respondent No.2 was set ex parte. Learned Senior Counsel rightly placed reliance on the judgments of this Court in BPI Sports (supra) and Kia Wang (supra) to urge that bad faith is an unfair practice involving lack of good faith at the time of filing applications and includes not only cases where an applicant intentionally submits wrong or misleading or insufficient information to the Trade Marks Office but also where it intends to lay his hands on the mark of a third-party, through registration, with which it has had earlier relations. The term 'bad faith' is a shade milder than malice.<\/p>\n
32. On perusal of the impugned order and the detailed Notice of Opposition, evidence and written submissions of the Appellant filed before Respondent No.1 and for all the aforesaid reasons, I am of the view, that this is a fit case for remand before Respondent No.1 for fresh consideration. The Registrar shall look into all relevant contentions raised by the Appellant and the supporting documents as also the rival contentions of Respondent No.2. More particularly, Respondent No.1 shall consider and adjudicate Appellant's contentions relating to alleged bad faith and its claim that the mark GHOSTBUSTERS is entitled to protection as a well-known trademark on the touchstone of Sections 2(1)(zg) and 11(6) and (7) of 1999 Act under the provisions of Section 11(2). The decision will be taken within three months from today, after giving an opportunity of hearing to the Appellant and Respondent No.2.<\/p>\n
33. Accordingly, the impugned order dated 16.04.2025 cannot be sustained and is quashed and set aside. Respondent No.1 shall decide the case on its own merits in accordance with law and it is made clear that this Court has not expressed any opinion on the merits of the case.<\/p>\n