By, Ankita Aseri

IMAGE TRADEMARK

With image trademark been granted to Taj Mahal Palace hotel, the images of Taj hotel can now not be used for commercial purpose.[1] With this Taj Mahal Palace hotel has joined the club of trademark buildings across the world i.e. the Empire State Building in New York, the Eiffel Tower in Paris and the Sydney Opera House. Appeal Board in the U.S. opposed NYC Beer who was using an image similar to the registered image of the New York Building. The Appeal Board was in agreement with the contention that NYC Beer logo will likely dilute the image mark of Empire State Building in New [i]York. The lighting design of Effiel Tower is an image trademark. According to the Eiffel Tower website, taking photos during the day is permitted, “however, its various illuminations are subject to author’s rights as well as brand rights … Usage of these images is subject to prior request from the Société d’Exploitation de la Tour Eiffel.”[2]

In 2014, the Australian Trade Mark Office accepted a three-dimensional shape trademark in the shape of the Sydney Opera House.[3] The Sydney Opera House Trust took this step to prevent others from using the Sydney Opera House shape on a number of goods including jewellery, printed matter, bags, household utensils, clothing, and games. The Trademark Act provides trademark on logos, brand names, label, name, word, shape of goods, combination of colors, sound, etc. From the time the Trademark Act has come into force, there has not been an attempt to trademark the architectural design of a building to stop its commercial use.

The commercial users of Taj Hotel’s image will have to pay a licensing fee for using the images after the building is trademarked by the Indian Hotel Company Limited [IHCL]. It will ensure that commercial use of the image of its dome and grand exterior can be made only with the consent of Taj Hotels Palaces Resorts Safaris.[4] The practices may require being changed by commercial photographers and filmmakers to use the images of Taj Mahal Palace.

In the case of Two Pesos, Inc. v. Taco Cabana Inc., United Stated Court held that the copying of design and interiors of the Appellants restaurant was a trademark infringement by the Respondents.[5] In another case, Ferrari S.P.A. Esercizio Fabriche Automobile Corse v. Roberts, it was held that the copying of the exterior shape and appearance of automobiles amounted to trademark infringement.[6] This shows that copying of exterior shapes and appearance amounts to trademark infringement.

The image trademark is worrisome because of two reasons: First, that it restrains even the incidental use of the building in any way; and second, that the right to use the image of a building that is synonymous with the city of Mumbai itself, should vest in the public and not with a private entity.[7] For instance, if a person wants to design and sell a postcard with the image of the Taj Mahal Palace Hotel, he will have to take permission from the Indian Hotel Company Limited [IHCL] group and pay royalties for such use; this would be the case even where the image of the building was used simply to depict the Mumbai skyline (a common design on memorabilia such as postcards, t-shirts etc, which are sold to tourists who visit the city). Also, there is a possibility of an overlap between Copyright and Trademark. Copyright law protects the architectural design of the building as an artistic work. Section 13 of the Copyright Act clarifies that for a work of architecture; copyright shall subsist only in the artistic character, and shall not extend to the processes or methods of construction.[8] Should a building, therefore, be the subject matter of copyright? This indicates of an overlap between Copyright and Trademark.

Under the Indian Trademarks Act, 1999, a trademark may include the shape of goods, their packaging, and combination of colors.[9] This means that a trademark registration is not limited to the brand name of goods/services and therefore, an individual/company may also file for a trademark on the packaging or a logo used on their goods/services and therefore, there can be an image trademark under the Indian Trademarks Act, 1999.

The move of trademarking the Taj Mahal Palace Hotel has opened up a new line for trademark registration on buildings image in India.

[1] Mumbai’s Taj Mahal Palace hotel acquires image trademark, The Indian Express, June 19, 2017, 8:37 PM, http://indianexpress.com/article/india/mumbais-taj-mahal-palace-hotel-acquires-image-trademark-4712121/.

[2] Taking photos of Eiffel Tower at night is illegal, Fox News Travel, 13 Nov. 2014,

 http://www.foxnews.com/travel/2014/11/13/did-know-taking-photos-eiffel-tower-at-night-is-illegal.html.

[3] Souvenir shops beware! The Sydney Opera House is now a Three Dimensional Trade Mark, Phillips Ormonde Fitzpatrick, January 24, 2014, https://www.pof.com.au/souvenir-shops-beware-the-sydney-opera-house-is-now-a-three-dimensional-trade-mark/.

[4] Lalatendu Mishra, In Mumbai, Taj Palace gets a trademark, The Hindu, Updated 24 June, 2017 9:43 PM, http://www.thehindu.com/news/national/in-mumbai-taj-palace-gets-a-trademark/article19141829.ece.

[5] Two Pesos, Inc. v. Taco Cabana Inc., 505 U.S. 763 (1992).

[6] Ferrari S.P.A. Esercizio Fabriche Automobile Corse v. Roberts, 739 F. Supp. 1138 (1990).

[7] Devika Agarwal, Granting trademark over buildings like Mumbai’s Taj Mahal Palace violates citizen’s right to cultural heritage, First Post, 21 June 2017, 5:49 PM, http://www.firstpost.com/india/granting-trademarks-to-buildings-like-mumbais-taj-mahal-palace-violate-right-to-cultural-heritage-3730735.html.

[8] §13 of the Copyright Act, 1957.

[9] The Trademarks Act, 1999.

 

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