Columbia Pictures, proprietor of the GHOSTBUSTERS mark in four classes, appealed the Registrar's rejection of its opposition to a third party's application to register GHOST BUSTER in Class 5 (pharmaceuticals). The Delhi High Court held that an earlier mark need not first have been formally declared 'well-known' under Sections 11(6)-(9) of the Trade Marks Act before its proprietor can invoke the cross-category protection under Section 11(2), and found GHOST BUSTER's adoption in an unrelated class would take unfair advantage of GHOSTBUSTERS' distinctive character and repute.
Legal Background
Section 11(2) of the Trade Marks Act, 1999 allows the owner of an earlier mark that is a well-known trade mark in India to oppose registration of an identical or similar mark for goods or services that are not similar, where the later use would take unfair advantage of, or harm, the distinctive character or repute of the earlier mark. Section 2(1)(zg) defines a well-known trade mark and Section 11(6) to (9) list the factors for deciding whether a mark qualifies. Rule 124 of the Trade Marks Rules, 2017 also provides for the Registrar to determine well-known status on application. The reported ruling concerns whether a formal determination is a precondition for invoking Section 11(2).