Beyond the Well-Known List – Delhi High Court Clarifies the Scope of Cross-Class Trademark Protection

The term “well-known trademark” has occupied an unusual spot in trademark law for a long time. While the Trade Marks Act, 1999, affords such marks a higher level of protection, a common issue for the Trade Marks Registry has been whether a mark owner can claim this protection without having secured formal recognition of the mark as a “well-known trademark,” as per Rule 124 of the Trade Marks Rules, 2017. The Delhi High Court has answered this question in Columbia Pictures Industries Inc. v. Registrar of Trade Marks & Anr.^[1] The Court has held that a formal declaration under Rule 124 is not a precondition for claiming the statutory protection available to well-known trademarks under Section 11(2) of the Act.

In this case, Columbia Pictures opposed the registration of the mark “GHOST BUSTER” in Class 5, covering pharmaceutical and medicinal products. Columbia Pictures based this opposition on its well-known^[2] mark “GHOSTBUSTERS,” and argued that GHOSTBUSTERS enjoyed a reputation extending beyond its registered classes and that registration of GHOST BUSTER would dilute that goodwill and falsely suggest an association with the popular entertainment franchise.

The opposition was rejected by the Registrar of Trade Marks. The main point was that the appellant’s mark was neither registered in Class 5 nor recognised as a well-known trademark under Rule 124. Thus, the Registrar was of the opinion that Columbia Pictures was not entitled to the protection under Section 11(2),^[3] which provides that a well-known trademark may prevent the registration of an identical or similar mark, even for dissimilar goods or services, where use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

The Delhi High Court criticised this approach as unsound. Justice Jyoti Singh held that the Registrar had read a requirement that the Trade Marks Act does not contain. The Court stated that Rule 124 provided a way for a proprietor to formally request the recognition and registration of their mark in the well-known trademarks registry; however, neither Section 11(2) nor the description of a “well-known trademark” in Section 2(1)(zg) requires such recognition for a well-known trademark to be protected. Rather, the Registrar is to assess, as the need calls for it, if a mark is well-known by the criteria set out in Sections 11(6)^[4] and (7)^[5] (among others, the promotion and enforcement of the mark, and its reputation).

The judgement matters because it clarifies the difference between recognition and declaration, a distinction often conflated in practice. There are instances when a trademark may qualify as a well-known mark without undergoing the separate administrative procedure under Rule 124.^[6] This provides an optional way to obtain formal recognition by the Registrar and the official well-known trademark list, but it does not create, enlarge, or limit the rights provided by the Act. By considering Rule 124 an essential part of Section 11(2), the Registrar was elevating a procedural rule over the Act. The judgement does not dispense with the requirement of proving that the mark is well known.

The Court rejected this approach, applying the settled principle that subordinate legislation cannot curtail the rights conferred by the parent Act. In a broader context, the judgement is likely to significantly influence the Registry’s examination of claims under Section 11(2). In the past, proprietors often found that the Registry’s list of well-known trade marks was treated as the sole benchmark for cross-class protection. The judgement states that the Registry cannot reject claims under Section 11(2) just because an owner has not obtained formal recognition under Rule 124. The registrar is bound to examine whether the mark is well-known based on the evidence and the legal requirements provided in the Act.

The practical effects of this clarification are significant. Owners of internationally famous brands, legacy marks, and marks with significant transborder reputations may be able to invoke cross-class protection more effectively in opposition and rectification proceedings — consistent with the transborder reputation principle recognised in N.R. Dongre v. Whirlpool Corporation.^[7] They may be able to do this without the formal, separate, and often lengthy process of obtaining the formal recognition of their mark as a well-known mark. However, this should not be understood as relaxing the burden of proof on applicants to establish the mark’s reputation and recognition. It does not eliminate proof; rather, it indicates the forum and the point at which such a determination should be made.

Takeaways

The judgement has important implications for trademark prosecution and enforcement:

• For proprietors: A prior declaration under Rule 124 is no longer essential before opposing or challenging the registration of a conflicting mark under Section 11(2). However, proprietors must still establish, through evidence, that their mark satisfies the statutory criteria for a well-known trademark.
• For opponents: The emphasis shifts from procedural recognition to the quality of evidence. Documentary proof of reputation, promotion, enforcement, market recognition and trans-border goodwill assumes even greater significance.
• For the Trade Marks Registry: The Registrar must independently assess whether a mark qualifies as a well-known trademark under Sections 2(1)(zg), 11(6) and 11(7), rather than rejecting a claim solely because the mark has not been formally recognised under Rule 124.
• For applicants: An applicant can no longer rely merely on the absence of Rule 124 recognition as a defence to an opposition. If the opponent establishes that its mark is well known, cross-class protection under Section 11(2) may still be available.

The judgement reinforces a fundamental principle of trademark law, i.e., substantive rights arise under the Trade Marks Act, not from procedural formalities. While Rule 124 remains a valuable means of obtaining official recognition, proprietors who can show that their marks meet the statutory criteria cannot be denied protection merely for not having pursued that administrative route.

References:

^[1] Columbia Pictures Industries Inc. v. Registrar of Trade Marks & Anr., C.A. (COMM. IPD-TM) 44/2025, decided on 6 July 2026 (Delhi High Court).

^[2] Section 2(1)(zg), Trade Marks Act, 1999 (definition of “well-known trademark”). 

^[3] Section 11(2), Trade Marks Act, 1999 (protection of well-known trademarks against use in relation to dissimilar goods or services).

^[4] Section 11(6), Trade Marks Act, 1999 (factors for determining whether a trademark is well known).

^[5] Section 11(7), Trade Marks Act, 1999.

^[6] Rule 124, Trade Marks Rules, 2017 (determination of well-known trademarks).

^[7] (1996) 5 SCC 714.