Aishani Partners
Well-Known Trademarks and Cross-Class Protection: Key Takeaways from the GHOSTBUSTERS Decision
August 10, 2026
Introduction
The concept of well-known trademarks occupies an important position within the Indian jurisprudence governing trademarks. By virtue of the reputation and distinctive character enjoyed by well-known trademarks, they are entitled to a broader scope of protection, extending beyond the confines of the specific goods or services for which they are registered. However, the procedures around well-known trademarks and their determination have often been surrounded by confusion and misconceptions.
Recently, in Columbia Pictures Industries, Inc. v. Registrar of Trade Marks & Anr.[1], the Delhi High Court clarified the position concerning well-known trademarks in the context of opposition proceedings before the trademark authority.
The case revolves around the renowned name GHOSTBUSTERS of Columbia Pictures, and essentially examines whether a formal declaration of the well-known status of an earlier trademark is required to invoke Section 11(2)[2] of the Trade Marks Act, 1999, in opposition proceedings.
Background of the Case
The Appellant in the case, Columbia Pictures Industries Inc. (“Columbia Pictures”) is an American Film Studio and Production Company, which is one of the ‘Big Five’ major American Film Studies. They are widely known for producing popular films such as Ghostbusters, Spiderman, Karate Kid among others. This particular case pertains to their popular supernatural comedy film, GHOSTBUSTERS which was released in 1984.
In view of the success enjoyed by the movie as well as the extensive promotion and use of the trademark GHOSTBUSTERS, the same has garnered substantial goodwill and reputation worldwide, and is irrevocably associated with Columbia Pictures. Columbia Pictures also owns rights over the trademark GHOSTBUSTERS in India since 2012, and have also received valid and subsisting registrations over the same in countries such as Canada, Germany, Japan, USA, UK, among others.
Thus, Columbia Pictures not only enjoys common law rights but also statutory rights over the name and trademark GHOSTBUSTERS.
In 2022, Columbia Pictures initiated an opposition action against Welch Materials India Private Limited (“Welch Materials”) for the conflicting mark titled GHOST BUSTER (without the ‘S’ in the end and space between GHOST and BUSTER) which had been adopted for products covering pharmaceutical, veterinary and sanitary items under Class 05[3] of the NICE Classification[4]. However, the Registrar of Trade Marks Office (“Registrar”) rejected the opposition action initiated by Columbia Pictures on the ground that the latter did not have registration over the trademark GHOSTBUSTERS in Class 05 and the products offered by both the parties were completely different from each other.
Moreover, the Registrar relied on the argument advanced by Welch Materials stating that the conflicting mark was allegedly inspired from the term “Ghost Peaks” which is a scientific chromatography analysis. Finding the explanation valid and logical, the Registrar stated the conflicting mark had an independent origin and that there was no presence of dishonest adoption or bad faith on behalf of Welch Materials. Thus, aggrieved by such order of the Registrar, Columbia Pictures approached the Delhi High Court.
Arguments Raised by Columbia Pictures
Columbia Pictures argued that the Registrar was misdirected in rejecting the opposition action on the ground that the Columbia Pictures has registrations only in Classes 09[5], 25[6], 28[7] and 41[8] catering to the entertainment domain, whereas, the conflicting mark was sought to be registered in respect of pharmaceutical products under Class 05. Columbia Pictures also pointed that the Registrar did not particularly look into or determine the well-known status of Columbia Pictures’ trademark GHOSTBUSTERS under Section 11(2)[9] of the Trademarks Act. Columbia Pictures contended that if the Registrar had considered the aspect of well-known trademarks in the instant case, Section 11(2) would have extended protection to the brand GLOSTBUSTERS of Columbia Pictures by virtue of it being well-known mark[10] even though the products/ services were different from each other.
Columbia Pictures also emphasized upon the well-known status of its brand name GHOSTBUSTERS internationally as well as in India, by virtue of their long use, extensive promotion, publicity and media coverage, foreign registrations and the subsequent films and sequels. On the basis of this, Columbia Pictures argued that the trademark GHOSTBUSTERS was entitled to protection as a well-known trademark under the Trademarks Act.
Columbia Pictures also highlighted that Welch Materials had prior knowledge and mala fide intent about their trademark GHOSTBUSTERS, as Columbia Pictures had earlier opposed a conflicting GHOST BUSTER application of Welch Material’s sister concern in the USA, which led to the USA application’s abandonment.
Arguments Raised by Registrar
The Registrar argued that Columbia Pictures had no monopoly over the products covered under Class 05, since they had no registration or commercial use of their trademark GHOSTBUSTERS pertaining to pharmaceutical products (under Class 05). As per the Registrar, the possibility of confusion between both the marks was unlikely, due to the goods’ dissimilarities.
Secondly, the Registrar argued that Columbia Pictures could not invoke Section 11(2) as they did not obtain any declaration of its brand name GHOSTBUSTERS as a well-known mark, either from any court during a civil action for infringement or passing off, or from the Registrar as per the procedure to determine the mark as well-known set under Rule 124[11] of the Trade Marks Rules, 2017 (“Rule 124 procedure”).
Further, the Registrar also highlighted that an opposition proceeding under the Trademarks Act is an “in personam” proceeding which is confined to the parties before the Registrar. On the other hand, the formal declaration of a trademark as a well-known mark is an “in rem” right, granting protection against third-parties across different classes. In view of the same, the Registrar contended that allowing Columbia Pictures to establish their trademark GHOSTBUSTERS to be well-known within the opposition proceedings would have allowed it to secure monopoly across different classes, without following the legislative procedures (to be followed by well-known mark owners for determination of their mark to be well-known) as laid down under the Rules.
Lastly, the Registrar also claimed that Columbia Pictures had not placed sufficient evidence on record which would enable the Registrar to conclude that the threshold to establish GHOSTBUSTERS as well-known as per the relevant provisions, were fulfilled.
Observations of the Delhi High Court
The Delhi High Court held that the Registrar had erred in their judgement by stating that in order for Columbia Picture to seek protection under Section 11(2) of the Trademarks Act, their trademark GHOSTBUSTERS was required to be formally declared as a well-known mark. After carefully reviewing the relevant provisions, the Court highlighted that for an earlier mark to be protected as a well-known mark, no formal declaration by either a Court or by the Trade Marks Registry is needed, and emphasized that an earlier mark should be “entitled to protection as a well-known trademark” for it to be benefitted under the provisions.
The Hon’ble Court also indicated that the Registrar was well within its power to determine a mark to be ‘well-known’ by examining the evidence placed on record by Columbia Pictures and see if the thresholds of the definition were met. As per the Court, Columbia Pictures had placed on record sufficient documentary evidence to show that GHOSTBUSTERS was a well-known mark. In view of this, the Court noted that the Registrar had failed to consider and appreciate the said documentary evidence placed before it.
The Court also rejected the Registrar’s plea that Columbia Pictures should have followed the Rule 124 procedure for GHOSTBUSTERS’ well-known mark determination, and stated that the Rule 124 procedure was only an alternative to such declaration through a non-adversarial mechanism. The Court opined that the Rule 124 procedure does not prevent the Registrar from exercising its powers to declare a mark to be well-known when such an issue has directly been raised in an opposition proceeding.
On the basis of the above, the matter was remanded to the Registrar for fresh considerations with directions to consider: (a) Columbia Picture’s allegations of bad faith on Welch Materials, and; (b) claims of Columbia Pictures that GHOSTBUSTERS was entitled to protection as a well-known mark under the provisions of the Act.
Concluding Remarks
The Delhi High Court’s decision provides vital procedural clarity on the protection of well-known marks under Section 11(2) of the Trade Marks Act, 1999. By emphasising that a prior formal declaration of well-known status is not required for a mark to be protected as well-known, and by clarifying that the procedures provided under the law are alternative ways for such determinations/ declarations, the judgment is of considerable significance and come as a sigh of relief for the owners of well-known marks.
Additionally, the court has ensured that cases of cross-class infringement actions on the basis of genuinely reputed international trademarks should not be outright rejected merely because no formal declaration has been obtained / sought. Having said that, the court has remanded the case back to the Registrar for their fresh considerations on the basis of the evidence submitted by Columbia Pictures in the capacity of opponent in the opposition matter.
Thus, the judgment offers a balanced approach regarding the protection of well-known trademarks and is likely to play an important role in future matters concerning reputed marks and dissimilar goods.
Contributed by: Doyita Mukherjee; with guidance from Aditi Verma Thakur
[1] Columbia Pictures Industries, Inc. v. Registrar of Trade Marks & Anr, C.A.(COMM.IPD-TM) 44/2025; 2026 DHC 5378, decided on 6 July 2026.
[2] Section 11 (2) of the Trademarks Act, 1999 -Relative grounds for refusal of registration – A trade mark which— (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
[3] Class 5 of The Nice Classification, 2013 – Pharmaceuticals and other preparations for medical or veterinary purposes.
[4] The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks.
[5] Class 9 of The Nice Classification, 2013 – Apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment.
[6] Class 25 of The Nice Classification, 2013 – Clothing, footwear, headwear.
[7] Class 28 of The Nice Classification, 2013 – Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.
[8] Class 41 of The Nice Classification, 2013 – Education; providing of training; entertainment; sporting and cultural activities.
[9] Supra Note, 2.
[10] Section 2(1)(zg) of the Trademarks Act, 1999 -―well known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
[11] Newly added by the 2017 amendments, Rule 124 of the Trade Marks Rules, 2017 provides that any interested person may, request the Registrar for determination of a trademark as well-known, and the Registrar considering other provisions of the Rule, shall determine the mark to be well-known.