The Taj Mahal Palace in Mumbai earned its trademark in June 2017, making the 114-year-old building the first in India to earn such a registration. The hotel has been a defining structure of Mumbai’s skyline and has now joined the elite and small club of trademarked properties in the… (Featured image is for representational purpose and has been sourced from https://commons.wikimedia.org/wiki/File:Taj_Mahal_Hotel_Mumbai_Bombay.jpg)
The Taj Mahal Palace in Mumbai earned its trademark in June 2017, making the 114-year-old building the first in India to earn such a registration. The hotel has been a defining structure of Mumbai’s skyline and has now joined the elite and small club of trademarked properties in the world, which includes the Eiffel Tower in Paris, the Empire State Building in New York and the Sydney Opera House.
With Indian Hotels Company Limited (IHCL) trademarking the building under the Trade Marks Act, 1999, commercial use of the image of its iconic dome and exterior will now require prior written consent from the Taj Hotels group and a licensing fee.
While the Taj group filed this application in class 43 for services pertaining to providing food, drink and temporary accommodation, a question arises whether a building can actually be registered as per the Trade Marks Act, 1999.
As per the Act, a “trademark” means:
- A mark capable of being represented graphically: A building is representable in the form of an image or a picture. It can also be drawn and thus can be easily graphically reproduced. Also, the Indian trademarks law does not prohibit unconventional trademarks from being registered. There are several proprietors who have trademarked sound since it can be represented graphically via musical notes. Hence, the exteriors of a building which are much more easily representable should be able to meet this criteria without any doubt.
- A mark which is capable of distinguishing goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors: A building such as the Taj Mahal Hotel is well recognized and is solely associated by the general public with the IHCL. Hence, it is clear that the exteriors of the Taj Mahal Hotel can be trademarked since they are distinctive and easily distinguishable.
Enforcement of IP Rights in Buildings
A trade dress is something that comprises the packaging of a product. It includes not only the trademark, but also the color, design and overall packaging of a product. There have been several instances wherein courts have actually enforced a trade dress. A few examples include:
- Deere & Co. & Anr. vs. S.Harcharan Singh & Anr. [CS(OS) No. 3760/2014 before the High Court of Delhi]: John Deere has used its signature green color on the body of its machines and yellow color on the seats and tires for over a century, and this color combination was supposedly used by the defendant. The court found this color combination to have taken a secondary meaning, thus entitling it to trade dress protection.
- AP Royal Oak watch vs. Swiss Legend Trimix [12 Civ. 5423 (HB)]: These parties were preparing watches with similar designs. AP sued Swiss Legend for trade dress infringement, and the court ruled in AP’s favor.
However, whether the concept of a trade dress can be applied to a building wherein the exteriors of the building are trademarked is still debatable. There have been landmark cases in which buildings were considered a valid trademark. A few examples are mentioned below:
- Fotomat Corporation v. Steven Cochran [437 F. Supp. 1231 (1977)]: It was observed by the Hon’ble United States District Court, D. Kansas that the Fotomat building configuration does serve incidentally functional purposes; it is, in essence, arbitrary and distinctive and may constitute a valid service mark.
- White Tower System, Inc., v. White Castle System Of Eating Houses Corporation [90 F.2d 67 (1937)}: White Tower System’s predecessors and organizers began business in Milwaukee, Wisconsin, using a building similar in design to White Castle’s. It was observed by the Circuit Court of Appeals, Sixth Circuit that White Castle being the prior user has the exclusive right to the name “White Castle” and to its style of building.
Thus, the exterior of buildings have been previously protected by various courts provided there is sufficient evidence that such exteriors are distinctive and are associated with the public and the proprietor.
Is the Taj Mahal Hotel building distinctive?
The Taj Mahal Hotel in Mumbai is one of the most important hubs, not just in India’s financial capital, but also across India. Its distinctive red-tiled Florentine Gothic dome sits 240 feet above the street level and is easily distinguishable in the Mumbai skyline. In fact, this dome is still used by the Indian Navy as a `triangulation point’ that guides its vessels to the harbor. These salient points make it distinctive.
Conflict between Copyright and Trademark
The architecture of a building is a subject of copyright the minute the building has been created. Section 52(s) of The Copyright Act, 1957, also provides a window to individuals to use copyrighted architecture. Section 52(s) states that ‘the making or publishing of a painting, drawing, engraving or photograph of a work of architecture or the display of a work of architecture’ is permissible’. Therefore, if a person takes a photograph of the Taj Mahal Hotel, he will not be infringing on any copyright. However, a question whether taking a photograph of the building lead to an infringement of the trademark arises. I think not. If the photographer does not use the photograph to sell his goods or services for commercial purposes, he will most probably fall within the safe zone.
The registration of the Taj Mahal Hotel building has made people aware of the fact that even a building can be registered under the Indian trademarks law. This registration has opened the flood gates for other individuals/entities who want dual protection for their landmark architecture under the copyright law and the trademarks law of India.