Author Name:   Sugaandh Kochhar

This Article aims to discuss the landmark decision of the Trademark Office to grant a trademark to the first ever building in India.

Taj Mahal Palace: Now A Registered Trademark

Trademarks are criterion through design, words or symbols, of the source of goods or services that help people associate the product and/or service with the corresponding brand. The new trend in Trademark law seen internationally, prominent in U.S.A. is the registration of trademark for landmarks. Amongst this new course are some of the very popular buildings in the world like the Chrysler Building, Eiffel Tower, New York Stock Exchange Building, Sydney Opera House, & so on..., the new addition to this is the Taj Mahal Palace in India.

The Taj Mahal Palace has successfully obtained a service Trademark under the Trademark Act, 1999 on 17/05/2017. The iconic building in Mumbai, that is almost 114 years old, is the first ever building in India to receive a registration. The Indian Hotel Company that runs the Taj Mahal Palace said that the step was taken “to protect the distinctiveness of the building.”

With this newly acquired title, Taj has joined the small but elite group of buildings and/or skyscrapers trademarked all over the world. The significance of this title is that;

a. Now nobody can use the image of Taj Mahal Palace for commercial use, so selling any object with this image on it will be illegal.

b. Any sort of commercial use will include the payment of a licensing fee to the company.

c. This title shall help protect the distinct structural magnificence.

This novel form of registration for landmarks is done for one of the primary reasons that trademark holders to attempt to control or limit the depictions of those landmarks in artistic works, pictorial representation, unfair commercial use, etc. For example, The Hollywood Sign is a landmark that is a protected trademark, or for which license fees are sought for its deception in films. According to real-estate magnate Donald Trump, all of his company’s building are trademarked: “If producers want to use the buildings in movies or advertisements, they come to us for permission and sometimes pay us for the use of the image.”In the case ofWhite Tower System Inc. v. White Castle System of Eating Houses Corp.,a building can have sought to be trademarked when the design serves to identify the source of goods or services for consumers and relying on this very reason the court said that the castle-shaped hamburger stand could serve as a trademark for the company.

Trade Marking A Building?

Several landmarks in New York like San Francisco’s Transamerica Tower and Los Angeles’ Mann’s Chinese Theater are among those landmarks that are registered. In fact, the New York Times observed “a growing inclination by the owners of unique structure to assert a trademark right to the design of their buildings and thereby control and even limit how images are used.”Therefore, for a landmark to become a registered trademark it must be used on or in connection with 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 per se. Also, the public must recognize such building or landmark as indicating and designating the source of particular goods or services. Thus, trademark protection “cannot be enforced in the absence of evidence that the public recognizes it and associates it with the owner’s services.”

In the Rock and Roll Hall of Fame and Museum v. Gentile Production, the facts of the case were that the Museum’s building Design was registered with the State of Ohio and the United States Patent and Trademark Office as a trademark. Photographer Charles Gentile took a picture of the Museum filed a lawsuit against Gentile over the depiction of the Museum in the poster. The Court in this case said that “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 merchandise to the customers.” However, it was found by the court that there was no evidence in the record which documents or demonstrates public recognition of the Museum’s building design as a trademark, thus it was held that the record did not establish that the Museum had used its building design as a trademark and thus laced a strong likelihood of success on the merits. Thus, for a landmark to be protected as a trademark, the public must recognize the landmark as a trademark, not just as a landmark.

In India, Taj Palace become the first to take the paramount step in becoming the first actual landmark to be registered. The registration was sought under Class 43 of the International Classification of Goods and Services (ICGS) that is followed under the Trademark Law in India and was accepted by the Trademark Office without any objections. Following the international regime, this was done by the IHCL to control the “exploitation” of property. By this they meant that now a day’s most of the buildings are like cookie cutter representations of former buildings, there is no uniqueness left in them, the motive of the IHCL was to prevent unfair use of the building by competitors. Also, if anyone wished to use, for any purpose, the images of the Taj Mahal Palace they had to seek the permission of the company via Licensing Agreement. However, such an entitlement will not stop the tourist population or the common man from photographing such places, unless strictly prohibited by the franchise or enterprise itself.

In such a scenario, trademarked buildings may enjoy a level of trademark protection that provides a rationale for thin protection for pictorial reproductions of building trademarks in many cases. The trademarks holder of a building may also enjoin certain reproductions of their trademark, but the holder must establish that a likelihood of confusion exists with concurrent use of the holder’s mark and the alleged infringing mark.

Infringement of Trademark:

Once users establish an exclusive right in a trademark, they can protect their mark from infringement by subsequent user, who may confuse the public as to the source of the goods or services provided. Similarly, in the case of a landmark that is also trademarked, owner may prevent other from using its mark, or one that is similar, if such use is likely to confuse public about the source or provider of goods or services. However, trademarks may be used without authorization for purposes other than designating the source of a good or service. Trademarks may appear in films, television programs, and other works of art, oftentimes to signify the trademarked product itself rather than a competing product. Such uses of trademarks, even when not authorized by the trademark holder, will generally be allowed. Courts have made allowances for such uses, recognizing “that where the use is not a source identifier, it is a fair one to which the trademark laws simply do not apply.” Although, when the trademark appearing in films or other media productions is done without the consent of the trademark holder they can seek to quash such uses by filling a trademark infringement action.

In the case of ESRT Empire State Building L.L.C. v. Michael Lang, ESRT Empire State Building LLC, owns federal registrations for the word mark EMPIRE STATE BUILDING for observation deck, sightseeing and real estate services, as well as design mark registrations for the same services for this two-dimensional depiction of the building exterior. The Respondent’s company used the picture on their beer bottles without the official permission or any form of licensing agreement form with the ESRT. The beer logo in the case belonged to trademark applicant Michael Lang who applied for the trademark on January 8,2011 with the intent to use the mark in commerce for alcoholic and non-alcoholic styles of beer. The Trademark Trail and Appellate Board found that ESRT’s mark is “famous for purposes of dilution”, that its mark is inherently distinctive or acquired its distinctiveness through its exclusive use of its mark and have a “strong degree of recognition”. After considering all the evidence, the board ruled that applicant’s mark is likely to cause dilution by blurring ESRT’s mark, hence ruled in ESRT’s favor.

Conclusion:
Buildings, as pieces of practical work, meticulously designed to evoke a visual aura, as seen by designers as sculptural works, to be protected by trademark. Following this passage Indianan Trademark Law has made a significant breakthrough by trade marking one of its oldest and remarkable landmarks, Taj Mahal Palace.

End-Notes
# https://www.wsj.com/articles/SB897434998149805000
# White Tower System v. WHITE CASTLE SYSTEM, ETC., 90 F.2d 67 (6thCir.1937)
# http://www.nytimes.com/1999/10/24/realestate/postings-lawsuits-involved-flatiron-new-york-stock-exchange-building-trademark.html
# The ROCK AND ROLL HALL OF FAME AND MUSEUM, INC. v. GENTILE PRODUCTIONS 134 F.3d 749 (6th Cir. 1998)
# http://ttabvue.uspto.gov/ttabvue/ttabvue-91204122-OPP-95.pdf

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