Granting trademark over buildings like Mumbai's Taj Mahal Palace violates citizen's right to cultural heritage
Trademarks over buildings such as Mumbai's iconic Taj Mahal Palace Hotel should not be granted by the Indian Trademark Office as it would unfairly restrict the right of the public to their cultural heritage
The iconic Taj Mahal Palace Hotel in Mumbai obtained a trademark on 19 June, making it the first ever building in India to be trademarked. One of the effects of the trademark registration is that the Indian Hotels Company Ltd (IHCL), which owns the hotel, can restrain any person from using the images of the 114-year-old building for commercial purposes.
Trademarks over buildings are not unheard of in the rest of the world and famous buildings such as the Empire State Building in New York City and the Eiffel Tower in Paris have been successfully trademarked in the past. However, a worrisome aspect of allowing trademark registrations over buildings is that it can unfairly restrain others from using the mark even where the use of the mark in question is incidental to the purpose of its use.
For instance, if a person wants to design and sell a postcard with the image of the Taj Mahal Palace, he will have to take permission from the 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).
Given that the Taj Mahal Palace is synonymous with the city of Mumbai itself, the right to use the image of the building should vest in the public and not a private individual/entity such as the IHCL.
Trademarks as ‘source indicators’
A trademark is a mark which is capable of “distinguishing the goods or services of one person from those of others”. For instance, the brand name ‘Nike’ used on shoes by the sports company, Nike, indicates to the consumers that the shoes bearing the name ‘Nike’ are indeed the goods sold by the sports company, Nike. The consumers would then be able to differentiate the goods of other companies from that of Nike, on the basis that the former would not bear the brand name ‘Nike’. Therefore, the purpose of a trademark is to act as a ‘source-indicator’, ie, a trademark provides information to the consumers about the origin (or source) of the goods/services.
Under the Indian Trademarks Act, 1999, a trademark may include the shape of goods, their packaging and combination of colours. 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. For instance, Nike’s famous ‘swoosh’ or ‘tick symbol’ is also part of its trademark.
Buildings as trademarks
Awareness about the value of intellectual property (IP) has increased with time and companies are increasingly filing for trademark registration on non-conventional marks such as sound marks (eg, Yahoo’s trademark on its famous Yahoo yodel) and smell marks. The Indian trademark law does not expressly prohibit non-conventional marks and therefore, one could argue that a building owned by an individual/company is capable of being registered as a trademark if it meets the requirements of a trademark.
The first requirement of a trademark under Indian law is that it must be “capable of being represented graphically”. A building such as the Taj Mahal Palace easily meets this requirement since it is capable of being represented visually through drawings or photographs. Secondly, the trademark must be capable of functioning as a source-indicator (ie, the mark should be able to distinguish the goods/services of one supplier from those of another). A mark is said to fulfil this condition when it is ‘distinctive’ in nature or when consumers are able to associate the mark with the goods/services of a particular person.
The Taj Mahal Palace Hotel in Mumbai enjoys a high level of distinctiveness, and it is common for any person who sees the hotel or its image, to recognise it immediately as the grand five-star hotel in Mumbai.
Limitations placed on the rights of the public
The problem with granting trademarks over buildings is that it severely curtails the right of the public to use that particular mark even where the use of the mark does not infringe the rights of the trademark owner. The main objective behind restraining third parties from using a brand name and logo, etc, of a company, is that if we allow third parties to use the trademark, it would result in ‘passing-off’ (ie, the third party would be able to pass off their goods/services as those belonging to the trademark owner); this, in turn, would mislead the consumer about the source of the goods/services and also damage the reputation of the company which owns the trademark. For instance, if a local shoe business started using the brand name ‘Nike’ to sell its goods it could mislead the consumers about the origin of the goods. An inferior quality good/service sold by the trademark infringer would also harm the reputation of Nike. This is why it makes sense to strictly prevent third parties from making unauthorised use of a trademark.
However, in the case of buildings, ‘all commercial use’ may not necessarily amount to unfair use. For instance, it is common for organisers of marathons (which include companies such as Airtel, Standard Chartered Bank and Puma) in India to incorporate the city skyline in their marathon T-shirt designs. It is possible that IHCL can restrain these companies from depicting the Taj Mahal Palace Hotel in the marathon T-shirt design on grounds that the use of the image of Taj Mahal Palace can mislead the public into thinking that the hotel is associated with the marathon in any manner. In this case, even a ‘fair’ use of the image by the marathon organisers would be prohibited by IHCL’s trademark.
Unlike copyright law, Indian trademark law does not contain a ‘fair use’ provision which allows third parties to use copyrighted material in certain specific cases such as research, educational purposes, etc. Therefore, it would be harder for a third party to defend its use of the Taj Mahal Palace building in cases where the image of the building is not used “in competition with” the business of IHCL. For instance, what if a filmmaker wants to shoot a documentary on the 26/11 Mumbai terror attacks and wants to depict the Taj Mahal Palace Hotel (one of the targets of the 26/11 attacks)? IHCL could insist that the film-maker pay royalties to the hotel for using the images of the Taj Mahal Palace Hotel. On the other hand, under section 52 (u) (ii) of the Indian Copyright Act, the film-maker would not be required to pay royalties because copyright law allows the inclusion of copyrighted artistic work in a cinematographic film, where the inclusion is “by way of background” or “incidental to the principal matters represented in the film”.
IHCL could insist that the filmmaker pays a royalty to the hotel for using the images of the Taj Mahal Palace Hotel. On the other hand, under section 52 (u) (ii) of the Indian Copyright Act, the filmmaker would not be required to pay royalties because copyright law allows the inclusion of copyrighted artistic work in a cinematographic film, where the inclusion is “by way of background” or “incidental to the principal matters represented in the film”.
The adverse impact of trademark on buildings would also be felt by photographers. This is because a photographer who clicks an image of the Taj Mahal Palace and then sells it to a magazine or newspaper would be commercially exploiting IHCL’s trademark. Therefore, the photographer would be required to pay royalties to IHCL. Trademark law would therefore not allow photographers or artists to reproduce the image of the Taj Mahal Palace Hotel. This can be contrasted with the provisions of copyright law which allow ‘freedom of panorama’ or the right to capture the photographs/videos or paintings of architectural works which are permanently situated in a public place. The ‘freedom of panorama’ is not expressly recognised under Indian copyright law, however, laws in other jurisdictions such as the United States provide for the panorama exception.
The strongest argument for disallowing trademark over buildings is that with time, architectural structures (both public and privately-owned buildings) become synonymous with the cultural heritage of a place. Famous examples in India are India Gate in New Delhi, the Charminar Fort in Hyderabad and the Victoria Terminus building in Mumbai. A private individual/company should not be allowed to own monopoly over the cultural heritage of a city which in fact belongs to every person who resides in that city (lending the building the character of a ‘public good’). Allowing trademarks over buildings does not serve the objectives of protecting the owner’s interest in preventing unfair competition or preventing damage to the reputation of the owner or consumer welfare. Trademarks over buildings should not be granted by the Indian Trademark Office as it would unfairly restrict the right of the public to their cultural heritage.
Devika Agarwal is a research fellow at Centre for WTO Studies, Indian Institute of Foreign Trade. She is also a volunteer at Strategic Advocacy for Human Rights (SAHR)
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