This article has been written by Avilash Kumbhar, pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
We’ve all heard of trademarking logos, brand names, headings, labels, tickets, names, signatures, words, letters, numbers, shapes of items, colour combinations, and even sounds, but trademarking an architectural design has never been tried since the Trademark Act (“Act”) went into effect in 1999.
The Indian Hotels Company (“IHCL”) created history by securing a trademark registration for the exterior design of the Taj Mahal Palace Hotel. While it is quite common to receive trademark registration for architectural structures across the globe, image registration of the Taj Mahal Palace is the first in India.
The Indian Trade Marks Registry granted very first image trademark registration to IHCL under the Act for image/architectural design of the iconic building of ‘Taj Mahal Palace’ hotel in Mumbai, i.e., the elegant structure and iconic dome thereby making it the first in the country to secure such trademark registration as depicted below.
With this, the hotel joins a tiny but exclusive club of famous structures and monuments across the globe that have these properties registered, thus elevating its prominence in the worldwide hospitality business. To name a few – the Empire State Building, the Citicorp Center and Guggenheim Museum in New York; the Transamerica Pyramid in San Francisco; the Wrigley Building in Chicago; the Eiffel Tower in Paris and Sydney Opera House in Australia. This article discussed the legislative backing and Registry’s recognition of the ability of buildings and landmarks to be identified as a source identifier to be eligible for trademark protection. Firstly, this article discussed the scope of rights granted to Taj Palace, and buildings of such nature in general under Image Trademarks registration. It goes on to discuss the requirements that such buildings need to fulfil to qualify as registrable trademarks, the need to have such registration. Lastly, the article touches upon the public policy implication of such monopoly and whether such monopoly deprives fair dealing by other proprietors and the general public’s right to cultural heritage.
Scope of the rights
As per the details available at the Indian Trademarks Registry (E-Register), IHCL has received registration over the outside facade/image of “Taj Mahal Palace” hotel for providing food and drink; temporary accommodation’ which is valid until October 13, 2026, and can be renewed by making a timely request of every 10 years from the date of application. As a result, no third-party can use the architectural design or even the image of the building to offer the same or similar services covered under the said registration, without IHCL’s prior permission. IHCL, can also enforce its registered trademark against any third-party use of the registered trademark to offer dissimilar grounds.
However, trademark registration only grants exclusive rights in relation to services covered under the respective registration. To prevent such unlawful use of the registered trademark by a third party, IHCL will need to establish (1) reputation and goodwill subsisting in the registered trademark and that the public associate the building subject to the registration with IHCL only; (2) misrepresentation; and lastly (3) damage to the IHCL’s goodwill by such representation.
IP protection for building trademark
Since IHCL has trademarked the structure, any commercial use of the dome and majestic exterior Taj Mahal Palace photographs will require prior permission and licence from IHCL. Commercial photographers and filmmakers may need to alter their methods. This has paved the way for the registration of trademarks on architectural designs in India. We can expect many of the country’s key landmarks to be trademarked and exclusively used for various unique products and services.
Image trademark
The Act requires the trademark (1) to be graphically represented; and (2) be distinct enough to be capable of distinguishing the goods or services offered / to be offered thereunder from those of others.
These criteria exist solely for practical purposes. A graphically represented trademark visibly indicating its each and every aspect not only aids in adequate scrutiny but it also allows the average consumer to perceive it as a trademark. With change in time, we have moved beyond just word marks and logos as trademarks and to adjust to this paradigm shift, non-conventional marks were introduced. The registration of Image Trademark is yet another addition to the non-conventional marks. While copyright protection to building design, plans and layouts have been in place for a considerable period, image trademark over such architectural and architectonic designs is a new and rising phenomenon in India. The debate of such trademark protections revolves around whether they are eligible for this protection and to what extent of the granting of such architectural design be protected? However, from a practical perspective, the protection and enforcement of non-conventional trademarks will remain ambiguous and technically impeded. The present trademark application filing system, the scrutiny procedure and the necessity for a mark to be unique are inherent in these hurdles. Although it is difficult to evaluate the eligibility of nonconventional trademarks’, the new trademarks which are anticipated to emerge as a result of the Taj Mahal verdict is intriguing.
Building’s name or a logo can be trademarked if the associated building’s name or logo is used as part of brand identity. For example, a very popular Los Angeles landmark, the ‘Walt Disney Concert Hall’ image is federally registered and is used on many products like shirts, magnets, and stationery, all of which are used to promote the building’s brand identity.
If the name, logo or the architectural design (usually referred to as “trade dress”) of a building which is used to offers any products or services is visually distinctive enough to be identified as a source of origin/identity of the brand and distinguish itself from comparable things, it can be registered as a trademarked. For instance, the use of ‘Walt Disney Concert Hall,’ a well-known and registered trademark, on merchandise to promote the building’s corporate identity, is image trademarking.
An image trademark is similar to any other conventional/non-conventional trademarks; however, it applies to architectural structures. Image trademark offers acknowledgment of the design and distinctiveness of such buildings and ensures that they are not imitated in any way.
Why is the trademark so important?
By registering for the image trademark, the IHCL reveals that it feels the very appearance of the building — or replicas of it — is so identifiable that anybody seeking to reproduce or exploit it for any commercial reason is seeking to cash in on its brand, and it so has to be protected. At its most basic, the registration implies that no person or entity may use photos of the Taj Palace exteriors for commercial purposes without permission. It also suggests that, according to the Indian Trademarks Registry, the Taj Palace is a recognisable and distinct architectural design in India. Buildings pass the criteria of graphical representation, as well as the capacity to operate as a source indicator and are thus entitled to be protected as a trademark.
The fundamental objective for obtaining an image trademark for the structure includes;
- Preventing copycat architecture, safeguarding the building’s distinctive design, and maintaining its originality and legacy;
- Restricting unauthorized use such as reproductions of the building in artistic works, photographic reproductions, unfair commercial use, by registering the structure as trademark etc.; and
- safeguarding the structure from being utilised in works that might tarnish and dilute its image, for instance, use of building design by cigarette/alcohol manufacturers on its product packages.
As a result of the image trademark registration, any commercial use of the trademarked image to offer similar services or even allied goods will be deemed an infringement action.
A significant point here is why, instead of going for a design or copyright registration, the IHCL opted to get a trademark registration. While Trademark registration not only promotes commercial income production through licensing, but it also indicates that a certain building functions as the source or works as a source identifier as well as safeguarding the building’s distinctiveness; a copyright registration solely preserves the building’s aesthetic value and design registration only aids in the expansion of commercial income production. Further, the life of copyright and design registration is limited, where trademark registration enjoys perpetual existence subject to timely renewal.
To be eligible for registration, a landmark building must be used on or in relation to the promotion and sale of goods and services or displayed on materials used in offering the goods or services for sale, rather than merely as a landmark in and of itself. Further, the general public must identify such a structure as identifying and marking the source of specific goods or services.
Thus, no proprietor can acquire exclusive and monopoly right over any building if it cannot adduce evidence that the public associate the building with the proprietor’s goods/services. In order to be protected as a valid trademark the building must create “a separate and distinct commercial impression which performs the trademark function of identifying the source of the identity of the origin of the mark and goods/services offered thereunder”. If the proprietor is not able to produce evidence to demonstrate that the public actually identified the building as a trademark. If the public does not rely upon the landmark to identify the source, then the landmark cannot be held to be a trademark.
Taking photographs with the building
To put the debate away from the trademarks law, it is appropriate to point out here that the European Union copyright law provides for the picture and video footage of architectural structures to be permanently placed in public without infringing on them, as a colloquium called the ‘Freedom of Panorama’. It restricts the copyright owner’s right to take action against the producers and distributors of such pictures for copyright violation. This concept is also enriched in the Indian Copyright Act, 1957 under Section 52 (1) (s) and (t) as non-commercial fair use.
The mainstream media widely and extensively covered this story erroneously suggesting that royalties be charged for photographing the structure in the future. Trademark Laws only prohibit unauthorized use as long as there is commercial exploitation by third-party proprietors. Tourists, on the other hand, are free to shoot pictures with the ‘Taj Mahal Palace’ hotel in the backdrop as long as the intention is not to financially exploit the image.
The road ahead: conclusion
The Taj Mahal Palace Hotel, as the first Indian building to receive an image trademark, has undoubtedly piloted in a new era for the development of trademark protection and there will certainly be a flood of applications seeking trademark protection for their building, to protect their distinctiveness. Because the Taj Palace Hotel is now a registered image trademark, any person who seeks to exploit the structure’s image for commercial purposes may do so only after obtaining a license from IHCL. This, however, does not interfere with the general public’s freedom to click photographs with the building as a backdrop, provided that the photographs are not thereafter commercially exploited without IHCL’s authorization. IHCL will have little trouble enforcing its trademark against third-party usage in regard to hospitality services or other connected goods or services. However, in the case of dissimilar goods or services, IHCL must demonstrate that dilution has happened by establishing that the general public links the mark with the mark’s owner, at least initially, when they see the mark in practically any situation.
References
- Devika Agarwal, “Granting trademark over buildings like Mumbai’s Taj Mahal Palace violates citizen’s right to cultural heritage”, First Post, June 21, 2017, Available at https://www.firstpost.com/india/granting-trademarks-to-buildings-like-mumbais-taj-mahal-palace-violate-right-to-cultural-heritage-3730735.html.
- Inika Charles, “Taj Mahal Palace Hotel First Building to Receive Trademark in India”, SpicyIP, June 29, 2017, Available at https://spicyip.com/2017/06/taj-mahal-palace-hotel-first-building-to-receive-trademark-in-india.html.
- Reeba Zachariah & Vipashana V K, “114-year-old Taj Palace becomes first Indian building to get trademark”, Times of India, Jun 19, 2017, Available at timesofindia.indiatimes.com/city/mumbai/taj-palace-first-building-to-get-trademark/articleshow/59210141.cms.
- Andrew T. Spence, “When a Landmark Cannot Ser When a Landmark Cannot Serve as a Trademark: Trademark Protection for Building Designs, Vol 2 (2000), Washington University Journal of Law & Policy. Available at openscholarship.wustl.edu/cgi/viewcontent.cgi?article=1517&context=law_journal_law_policy.
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