Image trademark for Taj Mumbai: Smart or senseless?

Indian hotels took the precaution of protecting goodwill of the hotel as a means of good governance

Earlier this week, The Indian Hotels Co. Ltd. announced that they had obtained a trademark (vide application no. 715972) for the architectural design of the famous Taj Mahal Palace hotel in Mumbai. The registration of an architectural design has never been attempted in India since the Trademark Act came into force in 1999. With Indian Hotels trademarking the building, nobody can now use the Taj Mahal Palace’s images for commercial purposes. The 114 years old hotel building now joins an elite and really tiny club of trademarked properties around the world: the Empire State Building in New York, the Eiffel Tower in Paris and the Sydney Opera House.
 

Why would the Indian Hotels want to trademark the architectural design of the Taj, one may want to ask. Maybe they decided to take a leaf out of the Empire State Building case in the United States. The ESRT Empire State Building LLC, owns federal registrations for the word mark EMPIRE STATE BUILDING for the observation deck, sightseeing and real estate services, as well as design mark registrations for the same services for a two-dimensional depiction of the building exterior since 1931 (the building was completed in 1930).

NYC Beer

Trouble started when NYC Beer used a likeness of the 2D depiction of the building as part of its logo. Based on a claim of acquired distinctiveness, the ESRT took them to court. In a non-precedential decision by the Trademark Trial and Appeal Board in the US, the owner of rights in the Empire State Building mark and building logo design, succeeded in opposing the application of NYC Beer using a likeness to the registered logo of the iconic NY building. The Appeal Board agreed with ESRT’s contention that the NYC Beer logo was likely to dilute the Empire State Building’s design mark because “a famous mark is one that has become a ‘household name’”.

Indian Hotels may not have had any such immediate fears of the Taj Mumbai image being compromised, but perhaps took the precaution of protecting the goodwill of the hotel as a measure of good governance: after all this famous edifice constructed in 1903 with a unique red-tiled Florentine gothic dome which crowns the Indo-Saracenic arches and architraves is so very distinctive and different.

Interestingly, the Eiffel Tower itself is not under copyright protection, which allows for photography of the structure. However, the lighting design is a recent addition and the Société d’Exploitation de la Tour Eiffel, the organization managing the structure, maintains that the lighting is an artistic work separate from the structure itself. As such, the artistic lighting is not in the public domain. 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.”

Sydney Opera House Architecture

The Sydney Opera House Trust meanwhile has over 40 trademarks registered in Australia in relation to the Sydney Opera House, including a two dimensional trade mark of the Opera House itself, as well as various logos and stylised forms of the Opera House. In 2014, the Australian Trade Mark Office additionally accepted a three dimensional shape trademark in the shape of the Sydney Opera House. 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 shape trademark appears to be an attempt to control use of the Sydney Opera House image/shape, particularly in relation to souvenirs. It is estimated that the trademark is worth 4 billion Australian dollars!

So who and what else can be trademarked? 

In 1994 Harley-Davidson filed a sound trademark application. The distinctive sound of the Harley-Davidson motorcycle engine is produced by V-twin, common crankpin motorcycle engines when in use. Harley-Davidson competitors opposed the trademark application arguing that cruiser-style motorcycles of various brands use a single crankpin V-twin engine which produce a similar sound. These objections were followed by litigation. In 2000 Harley-Davidson dropped efforts to federally register its sound trademark.

Another fascinating domain that has seen a lot of trademark and patent action is colour. The Tiffany Blue colour, the light medium robin egg blue, is protected as a colour trademark by Tiffany & Co. in some jurisdictions including the US. The colour was used on the cover of Tiffany's Blue Book, first published in 1845. Since then Tiffany & Co. has used the colour extensively on promotional materials, including boxes and bags. The colour is produced as a private custom colour by Pantone, with PMS number 1837, the number deriving from the year of Tiffany's foundation. As a trademarked colour, it is not publicly available and is not printed in the Pantone Matching System swatch books. 

Sir Mohamed Muktar Jama Farah, a Somalian-British distance runner

In 1960, the French artist Yves Klein took out a patent for International Klein Blue (IKB), a deep, matt shade of blue that he developed with a Paris paint maker and used in a series of monochrome blue paintings. He splashed it on to nude models in a performance piece that was sexist even by 1960s standards. Klein died in 1962, but IKB lives on. Derek Jarman used it in his film Blue and performance artists The Blue Man Group cover themselves with it.

 

Indian born Anish Kapoor, today a major global force in the arts, has the exclusive rights to paint using Vantablack, the blackest black that has ever existed.

There are other unusual and interesting copyrights/trademarks from diverse fields:

• Chanel's creative director Karl Lagerfeld trademarked his own silhouette featuring his ponytail and highly noticeable glasses.

• Confectionary maker Cadbury trademarked a specific shade of the colour purple called "Pantone 2685C" in 1995 for packaging its chocolate bars, but in 2013 the UK Court of Appeal rejected an application to revise the trademark after competitor Nestle raised objections.

• Olympic long-distance runner Mo Farah registered his distinctive "Mobot" symbol in 2012.

• And he's not the only Olympian to do so. Sprinter Usain Bolt registered his signature lightning bolt celebration pose, one of the most iconic images of the London 2012 Games.

• US beer producer AB InBev and Czech beer producer Budejovicky Budvar have been disputing the right to use the name "Budweiser" on their products. The dispute has been taken to courts in multiple jurisdictions, with neither party winning the exclusive right to the trademark.

• Author of "Tarzan of the Apes" Edgar Rice Burroughs registered a trademark for the Tarzan yell. "The mark is a yell consisting of a series of approximately ten sounds, alternating between the chest and falsetto registers of the voice."

Usain Bolt

The battle of trademarks has just about started in India. The Taj Mahal Palace getting its image trademarked is only the beginning. Considering that the trademark of the Sydney Opera House is valued at AUS$ 4 billion, there is obviously a lot at stake.

Sandeep Goyal is Chairman of Mogae Media, and an advertising veteran of 30 years. 

Carol Goyal is a lawyer by training. She is currently specialising in Art Law in London.