Prior declaration of a well-known trademark is not a statutory prerequisite for protection under Section 11(2).

The Appellant, a Delaware Corporation and major American film studio, is the registered proprietor of the trademark GHOSTBUSTERS in India (Classes 09, 25, 28, and 41) used since 1985

Respondent No. 2 applied for the mark GHOST BUSTER in Class 05 (pharmaceuticals) on a "proposed to be used" basis in 2020

The Appellant opposed the registration, alleging bad faith and that its mark is a "well-known trademark" entitled to cross-class protection under Section 11(2) of the Trade Marks Act, 1999

On April 16, 2025, the Registrar of Trade Marks (Respondent No. 1) rejected the opposition, holding that the goods were dissimilar and the Appellant could not claim a monopoly over Class 05

The Appellant challenged this order, noting that the Registrar failed to adjudicate on its status as a well-known mark

1. Whether the Registrar of Trade Marks is legally obligated to determine if a mark is "well-known" under Section 11(2) during opposition proceedings, even in the absence of a prior formal declaration

2. Whether a formal declaration under Rule 124 of the Trade Marks Rules, 2017, is a mandatory pre-condition for an "earlier trademark" to seek protection against dissimilar goods under Section 11(2)

3. Whether the adoption of the impugned mark "GHOST BUSTER" by Respondent No. 2 constituted bad faith in light of prior abandoned litigation between the parties' affiliates in the USPTO

Section 11(2) of the Trade Marks Act, 1999, which prohibits registration of a mark identical/similar to an "earlier trademark" for dissimilar goods if the earlier mark is well-known in India and the later use would be detrimental to its repute

Explanation (b) to Section 11, defining an "earlier trademark" as one "entitled to protection" as a well-known mark

Section 11(6) and (7) regarding factors for determining well-known status

Rule 43 of the Trade Marks Rules, 2017, which contemplates oppositions based on alleged well-known marks

Lego Juris A/S v. Gurumukh Singh and BPI Sports LLC v. Saurabh Gulati were cited to support the protection of well-known marks and the definition of bad faith adoption.

The Court found that the Registrar committed a "glaring error" by focusing solely on the dissimilarity of goods and ignoring the Appellant’s claim under Section 11(2)

The Court rejected the Registrar's argument that a prior formal declaration under Rule 124 was required; it reasoned that the phrase "entitled to protection" in Section 11 implies a qualification based on reputation, not a procedural certificate

The Court noted that the Registrar is statutory empowered and obliged to decide well-known status within opposition proceedings by evaluating evidence against the factors in Section 11(6)

The Registrar failed to address the Appellant's evidence of "bad faith," specifically the fact that Respondent No. 2's sister concern had previously abandoned an identical application in the US following the Appellant's opposition

This lack of adjudication on merit-based contentions rendered the impugned order unsustainable

The impugned order dated April 16, 2025, was quashed and set aside; the matter was remanded to Respondent No. 1 for fresh consideration, with directions to adjudicate on the "well-known" status of the GHOSTBUSTERS mark and the alleged bad faith of Respondent No. 2 within three months