The Delhi High Court has reportedly decided an appeal under Section 91 of the Trade Marks Act, 1999, filed by Columbia Pictures Industries, Inc. against an order of the Registrar of Trade Marks that had rejected Columbia's opposition to the registration of the mark "GHOST BUSTER" in Class 5, covering pharmaceutical and sanitary preparations. Columbia had opposed the mark on the ground that it was deceptively similar to its own well-known "GHOSTBUSTERS" franchise mark, even though the contested registration covered an entirely different class of goods.
The Registrar had reportedly rejected the opposition partly on the basis that Columbia's mark had not been the subject of a formal declaration as a well-known trademark under Rule 124 of the Trade Marks Rules, 2017, which sets out a procedure for a trademark owner to apply to the Registrar for such a declaration. On appeal, the Delhi High Court is reported to have clarified that a Rule 124 declaration is a facilitative, optional mechanism for a mark owner to obtain formal recognition, and is not a precondition for a court or the Registry to extend the cross-class protection that Section 11(2) of the Trade Marks Act affords to a well-known mark.
Under that reasoning, whether a mark qualifies as well known within the meaning of Section 2(1)(zg) of the Act is reportedly a question of fact to be assessed on the evidence placed before the adjudicating authority in any given proceeding, drawing on the Section 11(6) factors such as the extent of the mark's recognition among the relevant public and the duration and geographical extent of its use and promotion, rather than being gated by whether a separate Rule 124 application has previously been filed and granted.