“Image Trademark”- The Evolving Concept in IPR Jurisprudence

Introduction

First time in India the term "image mark" has been used when Indian Hotels Company Limited (IHCL) obtained the trademark for the Taj Mahal Palace Hotel and Tower Wing Exterior (image) on 19th June, 2016.[1] The registration number is 3386351 and falls under Class 43 that covers "services providing food and drink; temporary accommodation.[2]" The Indian Hotels Company Ltd (IHCL) was able to secure a trademark for the hotel’s unique architectural design consisting of the red-tiled Florentine Gothic dome and the grand exterior. It has distinctive Indo-Saracenic arches and is known for defining the aspect of Mumbai City’s skyline.[3]

Hence, by receiving the trademark protection, The Taj Mahal Palace Hotel is now enumerated in one of the only prestigious building structures which have received this kind of recognition so far including the Empire State Building in the New York, The Eiffel Tower in the Paris and The Sydney Opera House in the Australia.[4]

Image Mark

The word image mark relates to trade dress protection. Section 43(a) of the Lanham Act5 of USA defines trade dress as "almost anything at all that is capable of carrying meaning". The purpose of trademarks and trade dress is to prevent consumers from likelihood of confusion from buying one product under the belief that it is another. It establishes the link between the product and the source. For example, Apple Inc. recently secured the registration over the design of its flagship Apple Stores as trade dress.

Indication of Source

In the case of Rock & Roll Hall of Fame v. Gentile Productions (1986), the Rock and Roll Hall of Fame and Museum has registered trademarks in the name of The Rock and Roll Hall of Fame and its building design. A professional photographer, Charles Gentile, sold poster featuring a photograph of the Museum and underneath the photograph was written "ROCK N’.

ROLL HALL OF FAME". Also, His signature was beneath the photograph. The Museum accused him of trademark infringement, unfair competition, false or misleading representations and trademark dilution. They were able to prove the distinctiveness and reputation of their trademark. As a result, Gentile’s poster would lead consumers to believe that they are produced or sponsored by the Museum. Hence, the US States court went on to hold that the Museum had shown a likelihood of success in proving its federal and state claims, and the court found out that the Museum’s building design was a fanciful mark. Therefore, Gentile’s use of Museum’s building design and words were considered as trademark infringement.

Requisites for Trademark Protection

• The building should be either owned by an individual or a company.
• It should be distinctive in nature.
• It should represent the brand that associates a product or a service to a source.

Aspects of Trademark violation

• The use of the trademarked building should be non-editorial in nature. The image of the building should not be used to advertise other product.
• The use of the trademarked building by the third party in order to endorse identically similar goods or services.

Trademark v Trade Dress: An Indian Perspective

The trademark offers legal protection for a logo, symbol, phrase, word, name or design used to show the manufacturer of a product. However, Trade dress protection is broader in scope. It protects packaging and product design which creates overall brand value of the product.[7] The Indian law on trademark provides for passing off action against use of similar trade dress. For infringement of trade dress, thus a passing off action can be claimed.[8] Therefore, the Taj Mahal Palace Hotel, by applying for the trademark demonstrates that the look of the building is itself unique in nature and needs to be protected as reproduction of the architectural design is recognizable and anyone by attempting to replicate or use it for any commercial purpose intends to cash in on its brand.

Trademark Protection of Architectural Design and its Economic Benefits

The debate over trademark protection of architectural design initiated with the case of Empire State building v NYC beer.[9] The building, owned by a private firm, secured its trademark early in 1931. In the year 2016, ESRT Empire State building LLC, the owner, filed an opposition for grant of trademark filed by NYC Beer for its alcoholic beverages. The ESRT Empire State building LLC based its opposition on grounds of trademark dilution, likeness of confusion and false suggestion of its connection with the building. Since the trademark of ESRT Empire State building was famous and recognised, the trademark dilution was proved and hence, the Empire State building was able to hold its recognition through trademark protection. Also, the protection helped to prevent any kind of misuse or commercial unjust enrichment by other companies.

Similarly, the Eiffel Tower in Paris is amongst one of the elite building structures to have its registered trademark. Being a public property, the Eiffel tower does not hold a trademark for its architectural design but for its unique lightning design.[10]

The Sydney Opera House is governed by the trust named Sydney Opera House Trust and it has over 40 trademarks registered in Australia so far. In 2014, the three dimensional shape trademark in the shape of Sydney Opera House also got registered in Australian trademark office in order to prevent others from using this shape on number of goods including jewellery, printed matter, clothing, games, household utensils and bags etc.[11]

Conclusion

The grant of image trademark to Taj Palace Hotel confers exclusive right to exercise the rights of ownership. This gives, the degree of immunity from rivalry on the market. It may facilitate conduct by the IP owner that would be deemed anti-competitive, tending to suppress competition, raise prices, and reduce output and quality. Hence, this violates the main objective of Intellectual property law which is to create innovation and on the other hand creates an unsettled leeway in the market. Therefore, there is a need for balanced approach to ensure that intellectual property rights are not exercised in a manner that hampers innovation, restricts competition in the market or depreciates consumer welfare.

Ms. Aditi Gupta, B.A. Llb (Hons.),Institute of Law, Nirma University, Ahmedabad, Legal Intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.