Delhi High Court Says Registrar Must Examine 'GHOSTBUSTERS' Well-Known Mark Before 'GHOST BUSTER' Registration

The Delhi High Court has set aside an order allowing registration of the trademark "GHOST BUSTER" for pharmaceutical and related products after finding that the Registrar of Trade Marks failed to examine Columbia Pictures Industries' claim that "GHOSTBUSTERS" was entitled to protection as a well-known trademark.

Justice Jyoti Singh remanded the matter to the Registrar for fresh consideration within three months after hearing both sides. The court held that the Registrar had confined its analysis to the dissimilarity of goods and classes. It had failed to decide Columbia Pictures' plea that its mark was entitled to protection as a well-known trademark.

"There is absolutely no adjudication on the submission that Appellant's mark GHOSTBUSTERS is an earlier well-known trade mark under Section 11(2) and thus a nearly identical mark GHOST BUSTER cannot be registered as that would be detrimental to the character and repute of the mark GHOSTBUSTERS and the factum that rival goods were pharmaceutical products in Class 05 was irrelevant.", the court noted.

The appeal challenged an April 16, 2025 order rejecting Columbia Pictures' opposition to registration of "GHOST BUSTER" in Class 5 for pharmaceutical, veterinary and sanitary preparations, disinfectants, fungicides and related goods.

Columbia Pictures argued that it had adopted the "GHOSTBUSTERS" mark in 1984. It opposed the application in 2022 because "GHOST BUSTER" differed only by the omission of the letter "S" and the spacing between the words.

The studio contended that the Registrar had wrongly focused only on the dissimilarity of the goods and classes. According to Columbia Pictures, the Registrar should first have decided whether "GHOSTBUSTERS" was entitled to protection as a well-known trademark. If so, an identical or similar mark could not be registered even for dissimilar goods.

The Registrar defended its decision by arguing that Columbia Pictures had no registration in Class 5. It also contended that the competing goods catered to entirely different consumers. According to the Registrar, protection across unrelated classes could not be claimed without first obtaining a declaration of well-known status under the Trade Marks Rules.

The court rejected that argument. It held that a formal declaration was not a prerequisite for invoking protection as a well-known trademark during opposition proceedings.

"Section 11(2) merely requires that the earlier mark is well-known in India and the Registrar is empowered to determine whether the mark is well-known by considering factors under 11(6) and (7), including duration and extent of use, extent of promotion, recognition among relevant public, registrations and record of enforcement etc. by looking into evidence led by the opponent.", the court ruled.

The court also rejected the Registrar's interpretation of the word "entitled" in the statute. "'Entitle' as defined in Black's Law Dictionary means 'to grant a legal right to or qualify for' and cannot be construed to mean 'declared'.", it noted.

Examining the impugned order, the court found that the Registrar had overlooked Columbia Pictures' plea altogether. Instead, it had concentrated only on the difference between the competing goods and classes.

"Respondent No.1 did not even delve into this aspect of the matter and focussed its attention only on the dissimilarity of goods and classes and thus having travelled on the wrong path, reached the wrong destination.", the court ruled.

The court also noted that Columbia Pictures had alleged that the mark had been adopted in bad faith. It had relied on proceedings before the United States Patent and Trademark Office involving the applicant's sister concern, where an application for the mark "GHOST BUSTER" was abandoned after Columbia Pictures opposed it.

The court observed that these submissions had also not been addressed in the impugned order. It noted that Columbia Pictures had specifically argued that the applicant was aware of its rights in the "GHOSTBUSTERS" mark and that the earlier proceedings were relevant to its allegation of bad-faith adoption.

Holding that these issues required fresh adjudication, the court quashed the Registrar's order and remanded the matter. It directed the Registrar to consider Columbia Pictures' claim that "GHOSTBUSTERS" is entitled to protection as a well-known trademark.

The Registrar must also examine the studio's allegations of bad-faith adoption before deciding on the opposition afresh within three months.