Court Quashes Registrar's Decision, Orders Reevaluation of "Ghost Buster" Trademark Application
In a significant decision, the Delhi High Court has remanded for reconsideration the opposition filed by Columbia Pictures Industries, Inc. against the registration of the trademark "Ghost Buster" by a pharmaceutical company. The High Court quashed the Registrar of Trade Marks' order dated April 16, 2025, which had rejected Columbia Pictures' opposition, directing a fresh adjudication of the matter.
Columbia Pictures, renowned for its blockbuster movie "Ghostbusters," challenged the registration of the trademark "Ghost Buster" intended for pharmaceutical products by another entity. The High Court noted that the Registrar had failed to consider Columbia Pictures' claim that its trademark "GHOSTBUSTERS" was entitled to protection as a well-known mark under Section 11(2) of the Trade Marks Act, 1999. The Court emphasized that the Registrar must evaluate whether the earlier trademark meets the criteria to be considered well-known based on the factors outlined in Sections 11(6) and 11(7) of the Act.
Justice Jyoti Singh, presiding over the case, highlighted the error in the Registrar's decision to focus solely on the dissimilarity of the goods and classes, without assessing the well-known status of Columbia Pictures' mark. The High Court clarified that formal declaration of a trademark as well-known is not a prerequisite for invoking Section 11(2), which protects well-known trademarks from being diluted by similar marks across different classes.
The Court further directed the Registrar to examine allegations of bad faith in the adoption of the "Ghost Buster" mark by the respondent, considering Columbia Pictures' evidence that the respondent's sister concern had previously abandoned a similar trademark application in the United States following opposition by Columbia Pictures.
The High Court has mandated the Registrar to reevaluate the opposition within three months, ensuring both parties are heard and all relevant contentions and evidence are duly considered. The decision underscores the importance of protecting well-known trademarks from dilution and maintaining the integrity of trademark registration processes.
Bottom line:-
Trade Marks Act, 1999 - Opposition to registration of a trademark under Section 11(2) does not require the earlier trademark to be a formally declared well-known mark. The Registrar must consider whether the earlier mark is entitled to protection as a well-known mark based on factors under Sections 11(6) and (7) of the Act.
Statutory provision(s): Trade Marks Act, 1999 Sections 2(1)(zg), 11(2), 11(6), 11(7), 11(10)(ii); Trade Marks Rules, 2017 Rule 43, Rule 124.
Columbia Pictures Industries, Inc v. Registrar of Trade Marks, (Delhi) : Law Finder Doc id # 2938726
