Columbia Pictures Industries, Inc v. Registrar of Trade Marks & Anr.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 11(2)Section 11(5)Section 11(6)Section 11(7)Section 2(1)(zg)

Trade Marks Rules, 2017

Rule 124Rule 43

Provisions considered: Sections 2(1)(zg), 11(2), 11(5), 11(6) and 11(7) of the Trade Marks Act, 1999; Rules 43 and 124 of the Trade Marks Rules, 2017.

Brief facts

Columbia Pictures, the studio behind the Ghostbusters film franchise and registered proprietor of the GHOSTBUSTERS mark in India across Classes 9, 25, 28 and 41, opposed a Class 5 application for the mark GHOST BUSTER filed by a company dealing in HPLC chromatography products, on grounds of deceptive similarity and bad faith. The Registrar rejected the opposition and allowed the impugned mark to proceed to registration, reasoning that the goods were entirely dissimilar and that the respondent's explanation for adopting the mark was plausible. Columbia Pictures appealed, arguing that the Registrar had never engaged with its core contention: that GHOSTBUSTERS was a well-known mark entitled to cross-class protection under Section 11(2), regardless of how different the two parties' goods were.

Issues before the Court

1. Whether the Registrar could reject the opposition solely on the ground that the Appellant had registrations only in Classes 09, 25, 28 and 41 and none in Class 05, without considering the pleaded ground under Section 11(2).
2. Whether the proprietor of an earlier mark must first obtain a formal declaration of well-known status, from a Court or through Rule 124 of the 2017 Rules, before invoking Section 11(2) in opposition proceedings.
3. Whether the Registrar's finding that the Appellant could not claim monopoly over the whole of Class 05 could be treated as an implied rejection of the Section 11(2) ground.
4. Whether the Registrar was required to consider the plea of bad faith adoption under Section 11(10)(ii), including material relating to earlier USPTO proceedings against Respondent No. 2's sister concern.
5. Whether the matter ought to be decided by the Court itself or remanded to the Registrar.

Court's findings

The Court traced the statutory history of the well-known-mark concept to India's TRIPS obligations, and noted that Rule 124, introduced only in 2017, created a dedicated non-adversarial route to seek a declaration but did not foreclose the older route of establishing the same status evidentially within opposition proceedings. On the facts, the Court found the Registrar's silence hard to justify given that Columbia Pictures had placed on record extensive evidence bearing on recognition, use, promotion and enforcement history, including a near-identical mark's rejection by the USPTO involving a sister concern of the respondent, none of which the impugned order addressed. The Court declined to determine the well-known-mark question itself and expressly did not express any view on the ultimate merits.

Decision

The Delhi High Court set aside the Registrar's order and remanded the matter for fresh consideration, directing the Registrar to examine both the well-known-mark claim and the allegations of bad faith afresh, and to decide within three months after hearing both sides.

Keywords

Bad Faith Adoption Cross-class Protection Opposition Remand Section 11(2) Well-known Trademark