Trademark in the protection of buildings

Introduction

The Taj Palace Hotel, Sydney Opera House, Empire State Building, and Eiffel Tower – what do we find common in these magnificent structures? Yes, indigenous architecture has been planned out efficiently and raised to its aesthetic and artistic pinnacle. Renowned architectural buildings like the aforementioned are exploited by reproducing them on printed shirts, and coffee mugs, by making their collectible souvenirs, photographing them, painting them, and so on, without taking into consideration that possibly, the copyright of the architect could be violated in this process.

Initially, the idea of trademarking buildings began in the United States of America, where trademark owners had absolute rights to use the trademark to advertise, promote and sell their goods & services. Prominent buildings with a trademark include the Empire State Building in New York, the art deco spire of the Chrysler building, the façadethe of New York Stock Exch,ange, and the  Sydney Opera house of Sydney.

Berne convention: Protection of artistic works

The Berne Convention was held in 1886, in Switzerland which dealt with the protection of literary and artistic works. According to World Intellectual Property Organization (WIPO), this convention provided authors, musicians, poets, painters, architects, sculptors, etc the means to control how their works were used, by whom, and on what terms. It is based on three principles:-

 i} National Treatment – Wherein the signatories of this convention agree to give the same protection to works, as the works originating out of their own countries. Foreign works are those that are considered to be any work published for the first time in any other country.

ii} Automatic Protection – Protection must not be bound by compliance with any formality, signatory states legislation does not require notification (work need not be registered separately in various countries).

iii} Independence of Protection – The protection of the work is independent of legislation in effect, in the country of origin. Unique work is always protected by the legislation in the country they are being used.

The convention has been amended several times since its inception, the latest amendment was made in 1979. Berne Convention, post-1970, is overseen by WIPO and is, therefore, one of the many treaties falling under the authority of the United Nations.

 Trademark on buildings – Indian perspective

Section (2)(m) of Trade Marks Act,1999, defines “mark” as “mark to include a device branding, label, ticket, name, signature, word, letter, numeral, shape of goods, Indian perspective packaging or combination of colors thereof’. For any building to secure trademark registration, the nature of the building must create strong inference and identifiability completely and solely with the owner of the trademark and there must be a distinguishing factor in which goods and services are offered by the owner of the trademark can be differentiated.

Taj Mahal Palace Hotel which, is owned by Indian Hotels Company Limited (IHCL), has been a key component of Mumbai’s aesthetic attraction since 1903. With its rich blend of European and Islamic-styled architecture, overlooking the breathtaking view of Mumbai harbor, it has become a structure of cultural importance and represents the essence of Mumbai. Successful registration of the Indo-Saracenic arches and architraves of the hotel along with its tower wing exterior has been done under Registration No. 3386351. While Registration No. 3386351, deals with trademark registration of a distinctive red-tiled Florentine Gothic dome.

There are two reasons why buildings need trademark protection – Either the building has cultural significance, with originality, creativity, and uniqueness in design requires protection, or to prevent the “copycat culture” wherein designs of buildings are exactly replicated. An essential criterion that ought to be fulfilled to receive a trademark includes, that the structure of architecture (building, house, etc) should be capable of graphical representation. Further, the structure should be such that, a consumer identifies it with the source of certain goods and services. Trademark registration of certain parts of the Taj Mahal Palace Hotel is indicative of the development of trademark laws in India.

A setback – Raj Rewal v. Union of India

Among the cases which have been lost in the pandemonium of cases taking up headlines, in this case of an architect, wherein the judgment did not take into consideration the feelings of an architect over his own manifested and executed building. Raj Rewal a well-known architect was disheartened when ITPO proposed to demolish two of the buildings he had designed. The matter was taken to the court, where the court ruled that the buildings could be demolished as they belonged to ITPO and the article 300-A of the Indian Constitution states “No person shall be deprived of his right to property save by authority of law” coupled with the fact that urban planning overshadows moral rights of an architect. Further, the court went on to say that, though the Union of India and ITPO have erred by not taking into consideration the feelings of the architect, no recourse or remedy is available to the plaintiff. The architectural works infringement issue requires a thoughtful understanding and reconsideration.

References Used:-

1.  https://ijpiel.com/index.php/2021/12/15/copyright-protection-to-architectural-works-and-trademark-protection-to-buildings-under-the-indian-regime/
2. https://www.lexology.com/library/detail.aspx?g=e56cbff7-a884-4935-af05-5084f90bd5ad#:~:text=Under%20the%20Trade%20Marks%20Act,be%20capable%20of%20distinguishing%20the
3. https://www.intepat.com/blog/trademark/can-trademark-building-india/
4. https://www.copibec.ca/en/nouvelle/163/savez-vous-ce-qu-est-la-convention-de-berne-
5. https://www.wipo.int/treaties/en/ip/berne/summary_berne.html