The Delhi High Court has held that a trademark owner does not need a formal declaration recognising its mark as a "well-known trademark" before opposing the registration of an identical or similar mark for unrelated goods or services.

Justice Jyoti Singh made the observation while hearing an appeal filed by Columbia Pictures Industries against the registration of the mark GHOST BUSTER for pharmaceutical, veterinary and sanitary products under Class 5.

Columbia Pictures had opposed the application by relying on its GHOSTBUSTERS trademark, associated with the globally popular film franchise. However, in April 2025, the Registrar of Trade Marks rejected the opposition, noting that the company had registrations for GHOSTBUSTERS only in Classes 9, 25, 28 and 41 and had neither registered nor used the mark for Class 5 goods.

The High Court found that the Registrar had failed to consider Columbia Pictures' claim under Section 11(2) of the Trade Marks Act, 1999. The provision protects well-known trademarks even against the registration of identical or similar marks for dissimilar goods or services.

Rejecting the argument that Columbia Pictures first needed to obtain a formal declaration that GHOSTBUSTERS is a well-known trademark, the Court held that the law imposes no such requirement.

"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 observed.

Justice Singh explained that while deciding an opposition, the Registrar is empowered to determine whether an earlier mark qualifies as a well-known trademark by considering the factors set out in Sections 11(6) and 11(7) of the Act. These include the mark's reputation, duration and extent of use, promotional efforts, registrations and enforcement history.

The Court emphasised that the right to oppose registration under Section 11(2) flows from the well-known nature of the earlier mark and not from a formal declaration recognising it as such.

The Court also held that the Registrar had adopted an incorrect approach by focusing only on the fact that the competing marks related to different classes of goods, without examining the evidence produced by Columbia Pictures regarding the reputation of the GHOSTBUSTERS mark.

"Having travelled on the wrong path, [the Registrar] reached the wrong destination," the Court remarked.

Additionally, the Court noted that the Registrar had failed to consider Columbia Pictures' allegation that the mark GHOST BUSTER had been adopted in bad faith. The company claimed that a sister concern of the applicant had earlier applied to register the same mark in the United States but abandoned the application after it was opposed.

Finding the Registrar's decision legally unsustainable, the High Court set aside the order and directed the Registrar to reconsider the matter afresh within three months.

The Court clarified that it had neither declared GHOSTBUSTERS to be a well-known trademark nor expressed any opinion on whether the opposition should ultimately succeed.

Senior Advocate Satvik Varma, along with Advocates Sugandha Bhatia, Parth Agrawal, Shantanu Parmar and Balram, appeared for Columbia Pictures Industries.