Is prior formal declaration of well-known status required for cross-class protection? Delhi High Court clarifies

It is a well-established principle of trademark law that well-known trademarks may enjoy broader protection beyond the goods and services for which they are registered, including against identical or deceptively similar marks used in respect of dissimilar goods or services. Section 11(2) of the Trade Marks Act, 1999 provides such protection where the earlier mark is a well-known trademark in India and use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. However, a recurring question has been whether a proprietor must first obtain a formal declaration of “well-known” status before invoking such protection.

In the recent case of Columbia Pictures Industries, Inc. v. Registrar of Trade Marks & Anr., C.A.(COMM.IPD-TM) 44/2025, the Delhi High Court clarified that a prior formal declaration of well-known status is not a statutory pre-condition for invoking Section 11(2).

The Dispute

The dispute arose when the Appellant, Columbia Pictures Industries, Inc., initiated opposition proceedings against the mark GHOST BUSTER in class 5, relying on its renowned GHOSTBUSTERS mark.

The Appellant, an American film studio and production company responsible for producing and distributing popular films and franchises including Ghostbusters, Spider-Man, Men in Black, Jumanji and The Karate Kid, claimed that GHOSTBUSTERS qualifies as a well-known trademark and that adoption of a nearly identical mark, even for dissimilar goods, was likely to result in confusion and false association and would be detrimental to the distinctive character and repute of its mark.

However, the Learned Registrar dismissed the opposition, principally on the basis that the Appellant has registrations only in classes 9, 25, 28 and 41 and the mark is used for goods and services related to the field of entertainment & media and allied goods/services while the GHOST BUSTER mark of Respondent No. 2 sought to be registered for pharmaceutical products in the healthcare industry in class 5, which is a separate class. The Registrar did not substantively adjudicate Appellant’s contention that GHOSTBUSTERS was an earlier mark entitled to well-known protection under Section 11(2) and dismissed the proceedings on basis of dissimilarity of goods offered.

Court’s Analysis

Reviewing the provisions of Trade Marks Act, 1999 and relevant Rules in detail, the Delhi High Court held that there is no statutory requirement under Section 11(2) for the proprietor of an earlier mark to first obtain a formal declaration of well-known status before invoking the provision in opposition proceedings. The Court clarified that where a proprietor claims that its mark is well-known in opposition proceedings, the Registrar is required to examine the evidence placed on record and determine whether the mark satisfies the statutory requirements under Sections 11(6) and 11(7), including the recognition of the mark, the duration and extent of its use and promotion, registrations and the record of successful enforcement, among other factors.

The Court therefore clarified that a prior declaration under Rule 124 is one route for obtaining formal recognition but it is not a prerequisite to raising and establishing a claim under Section 11(2) in opposition proceedings. If the proprietor is able to establish that its mark meets the threshold of a well-known trademark under Section 2(1)(zg), read with Sections 11(6) and 11(7), it may be entitled to oppose registration of an identical or similar mark for dissimilar goods under Section 11(2), notwithstanding the difference in classes and goods offered.

In the present case, the Court found that the Registrar had failed to consider the Section 11(2) claim and remanded the matter for fresh consideration.

Practical Takeaway

For brand owners, this provides an important avenue to assert protection against similar marks in other classes, even where the proprietor does not have a registration or commercial use for the goods covered by the later application. However, cross-class protection is not automatic. The proprietor must still establish that its mark meets the statutory requirements for protection as a well-known trademark. Thus, evidence relating to the mark’s reputation and recognition, duration and extent of use, promotion and publicity, registrations and enforcement history can be critical when seeking protection beyond the classes in which the mark is registered or used.

Written by Keerthana K