Ordinarily, trademark protection is strongest in relation to the identical or similar goods or services for which a mark is registered. Some marks, however, acquire such a strong reputation that the law protects them even against use or registration for dissimilar goods and services. These are known as ‘well-known trademarks,’ and there is a new development concerning them. The Delhi High Court, in Columbia Pictures Industries, Inc. v Registrar of TMs, on 6th July 2026, ruled that an opponent can seek well-known status without having their mark officially declared as well-known beforehand. While this ruling clears up the confusion on how these marks are protected, it also highlights practical nuances proprietors must navigate when establishing ‘well-known’ status of their marks on a case-by-case basis.
In this case, Hollywood giant Columbia Pictures appealed before the Delhi High Court against the Registrar’s order that rejected its opposition to the application of Welch Materials, a chromatography and laboratory equipment manufacturer, seeking registration of the mark GHOST BUSTER in Class 05 (Pharmaceuticals, medicines and medical preparations). Columbia is the registered proprietor of the trademark GHOSTBUSTERS in four classes: Class 09 (Scientific and technical apparatus), 25 (Clothing), 28 (Games and toys) & 41 (Education and entertainment).
The Registrar rejected Columbia’s opposition because the rival goods were dissimilar, and Welch’s justification for adopting GHOST BUSTER made sense to him. Registrar also noted that Columbia’s GHOSTBUSTERS lacked formal declaration of “well-known” status either from the Court or under Rule 124 of the Trade Marks Rules, 2017. Columbia argued that Section 11(5) of the Trade Marks Act, 1999 grants well-known marks cross-class protection even without a formal declaration, and alleged bad-faith adoption based on Welch’s sister concern abandoning a similar application in the U.S. following Columbia’s opposition before the U.S. Patent and Trademark Office (USPTO).
Further, the Registrar, in his order and before the Court, did not provide a plausible explanation for overlooking the evidence put forward by Columbia in the Opposition. Noting this, the Court remarked, “the Registrar, having travelled on the wrong path, reached the wrong destination.” As a result, the DHC did not decide whether Columbia’s mark was a well-known mark, or whether Welch acted in bad faith. Rather, it set aside the Registrar’s order and remanded the matter back to him to re-adjudicate the opposition afresh on both well-known status and bad faith.
Cross-class protection is usually reserved for well-known trademarks, owing to their immense goodwill. However, the present case complicates this situation because if cross-class protection under Section 11 can be claimed without filing Form TM-M for a well- known mark status, then what is the point of Rule 124, which allows trade mark owners to request that the Registrar declare their TM mark well-known? To address this, the Court held that a prior Rule 124 formal declaration is not a prerequisite for seeking cross-class protection, and that the Registrar must evaluate the well-known status during the opposition proceedings when raised under Section 11(2). In my view, by choosing flexibility over administrative certainty, the High Court thoughtfully navigates the tension between proactive registration (Rule 124) and reactive opposition (Section 11). While at it, it leaves room for the framework to harmonize further over time.
Entitled to Protection vs. Officially Declared
Let’s look at the rule bypassed: Rule 124. Under this, to have a mark officially recognized as “well-known”, a trademark owner pays a fee of Rs 1 lakh, opens its application for third-party objections for a thirty-day window, and faces public scrutiny. In return, once it passes those hurdles and the “well-known” status of the mark is declared and featured in an official list accessible to the public, the proprietor is not required to wheel in boxes of evidence to prove its status in each proceeding. In essence, Rule 124 establishes an in rem enforceable right that blocks other applicants from registering a similar or identical mark across dissimilar classes.
Now that we have unpacked Rule 124, let’s see how the Court addressed the Registrar’s argument that, in this matter, a prior declaration of ‘well-known’ status under Rule 124 was a mandatory prerequisite. The Court pointed to Explanation (b) to Section 11, as per which an ‘earlier trademark’ includes any mark which is ‘entitled to protection’ as a well-known trademark. This meant that the phrase ‘entitled to protection’ cannot be construed as ‘declared’ or ‘determined’ and would include marks whose well-known status is established during opposition proceedings through the evidence placed before the Registrar. Had the statute required a prior formal declaration, it would have explicitly mandated it as in Section 11(8).
The Court also held that Rule 124 is delegated legislation, which means it cannot restrict or shrink substantive protection under Section 11(2) for a well-known mark that flows directly from the Parent Act. The Registrar is statutorily bound by Section 11(5) to evaluate a mark’s well-known status by tracing the opponent’s evidence and applying factors under Section 11(6) and 11(7); the Registrar is to determine whether an earlier mark qualifies for well-known protection.
I agree with the Court in prioritising the Parent Act. Let’s look at ITC Limited v Central Park Estates and Anr. (2022). The DHC held that Rule 124 is an “additional” administrative route. The courts still retain jurisdiction to declare a mark “well-known” during legal proceedings such as infringement/passing-off suits. The Court here upheld the plaintiff’s mark BUKHARA as fulfilling the criteria under Section 11(6) and 11(7) and directed the Registrar to add the mark to the List of Well-Known Marks maintained under Rule 124(5).
Not just this. The DHC, in Kamdhenu v Registrar of Trade Marks (2023), explicitly detailed how the Registrar must handle a Rule 124 application: the Registrar must thoroughly evaluate the documentary evidence submitted by the applicant and offer chances to fix defects in the application. Once the application is found to be in order, the Registrar must publish the mark in the Public Notice to invite third-party objections. Only if the mark satisfies the criteria under Section 11 and survives objection, the Registrar determines the mark as well-known and includes it in the List of Well-Known Marks.
Opposition proceedings are private and case-specific. If the Registrar determines during an opposition that a mark is “well-known”, the decision applies only to that specific case, and it does not place the mark on the central, searchable List. As per Tata Sia Airlines v Union of India (2023), filing Form TM-M and payment of the prescribed fee are mandatory steps to have a mark entered in the central List of Well-Known Trademarks, regardless of whether the underlying declaration came from the Registrar or a court judgment. So one can infer from this that an unlisted mark can still be evaluated and recognized as well-known within opposition proceedings to prevent a conflicting application across different classes. As a way forward, the proprietors may use a dual approach: pursuing Form TM-M under Rule 124 for in rem central listing while concurrently invoking Section 11(2) oppositions to block infringers on an ad hoc basis.
I think on this issue, the DHC’s decision is a good precedent. The Court’s approach provides flexibility to the proprietor by leaving central listing as a strategic choice rather than a mandate. This thereby protects the proprietor’s statutory rights under Section 11(2). However, if this mark is not centrally listed, it might lead to a lack of clear notice of the mark’s status to the public, further causing competitors to unknowingly adopt similar marks and trigger avoidable litigation.
Bad Faith in a Vacuum
Adding to the fear of administrative inefficiency, how, in the absence of this formal declaration on a central registry, can the TMs Registry fairly accuse a third party of ‘bad faith’ for adopting a similar/identical mark in a different class?
Although the Court left it to the Registrar to take up the matter afresh and decide on bad faith, the Court asserted, “bad faith is a shade milder than malice”, and affirmed, as in the cases BPI Sports and Kia Wang before the Delhi High Court in 2023, that bad faith also lies where the applicant intends to lay hands on the trademark of the third party through registration and is not limited to intentionally placing wrong/misleading/insufficient information in the trademark registration applications.
But let’s analyse this assertion- if a mark like in this case, Columbia’s GHOSTBUSTERS, lacks both a formal declaration under Rule 124 or a determination of well-known status by a Court or a Registrar under Section 11(8), how is a party, especially a small or domestic business, supposed to know every mark worldwide that considers itself well-known?
Without a Rule 124 declaration or a Section 11(8) determination, GHOSTBUSTERS is a standard, class 09, 25, 28 and 41-specific mark on the register. Welch, searching class 05 to seek registration of the mark GHOST BUSTER, will see a clear field. So it is not sound to assume that Welch acted in bad faith merely because a movie exists with a similar name.
Working with the Good Gray
Aimed at preventing bad-faith exploitation and bridging procedural gaps, this DHC tries to balance the practical tension between Rule 124 declarations and Section 11 opposition proceedings. The decision was well-intentioned in ruling that a Rule 124 declaration is not a statutory prerequisite under Section 11(2). It ensured that proprietors are not barred from opposing cross-class infringement simply because the mark is unlisted. However, relying on case-by-case evaluations during opposition proceedings without central listing can create ambiguity and unpredictability among proprietors. Moving forward, to prevent guesswork and preserve honest businesses, there is a need to establish clear standards for proving bad faith across dissimilar classes when the original mark lacks a formal well-known declaration or determination.
