The Delhi High Court has set aside the Registrar of Trade Marks’ order rejecting Columbia Pictures Industries Inc.’s opposition to the registration of the trademark “GHOST BUSTER” for pharmaceutical products and remanded the matter for fresh consideration, holding that the Registrar failed to examine whether “GHOSTBUSTERS” was entitled to protection as a well-known trademark under the Trade Marks Act, 1999.
Justice Jyoti Singh allowed the appeal filed by Columbia Pictures against the Registrar’s order dated April 16, 2025, which had rejected its opposition to the registration of the mark “GHOST BUSTER” in Class 05 for pharmaceutical, veterinary and sanitary preparations.
Columbia Pictures contended that “GHOSTBUSTERS”, first adopted in 1984 for its blockbuster film franchise, had acquired immense global goodwill and reputation through films, television series, merchandising and registrations across several jurisdictions. The company argued that the impugned mark was almost identical to its registered trademark and had been adopted dishonestly despite its established reputation.
The Registrar had rejected the opposition primarily on the ground that Columbia Pictures’ registrations were confined to Classes 9, 25, 28 and 41, whereas the respondent sought registration in Class 05 for pharmaceutical goods, which were dissimilar. The Registrar also accepted the respondent’s explanation that the expression “GHOST BUSTER” was derived from the function of its chromatography products used to eliminate “ghost peaks” in HPLC analysis.
Disagreeing with this approach, the High Court held that the Registrar had completely failed to consider Columbia Pictures’ contention that “GHOSTBUSTERS” was entitled to protection as a well-known trademark under Section 11(2) of the Trade Marks Act.
The Court observed that once such a plea was specifically raised in opposition proceedings, the Registrar was obliged to examine whether the earlier mark qualified for protection as a well-known trademark and whether registration of an almost identical mark, even for dissimilar goods, would take unfair advantage of or dilute its distinctive character and reputation.
Rejecting the contention that only a formally declared well-known trademark could invoke Section 11(2), the Court held that the statute does not mandate a prior declaration. The Court clarified that the Registrar is empowered to determine, in opposition proceedings themselves, whether a mark is entitled to protection as a well-known trademark by applying the factors contained in Sections 11(6) and 11(7) of the Trade Marks Act.
The High Court also found that the Registrar had failed to consider Columbia Pictures’ allegations of bad-faith adoption, as it relied on prior proceedings before the United States Patent and Trademark Office (USPTO), where an application for the identical mark filed by the respondent’s sister concern had been abandoned following opposition by Columbia Pictures.
Holding that the Registrar had ignored material contentions and evidence placed on record, the Court quashed the impugned order and directed the Registrar of Trade Marks to reconsider the opposition afresh. The Registrar has been directed to adjudicate, within three months, the issues relating to the alleged bad-faith adoption as well as Columbia Pictures’ claim that “GHOSTBUSTERS” is entitled to protection as a well-known trademark under the Trade Marks Act, after granting both parties an opportunity of hearing.
