Two iconic Mumbai buildings have got trademark protection. What does this mean for artistic freedom?

For almost a century, two structures have defined the Mumbai skyline: the arched Gateway of India, and the imposing dome of the Taj Mahal Palace hotel. But for nearly two years, depictions of one part of that skyline in films, advertisements, books, t-shirts or other commercial merchandise have been coming at a price.

In June 2017, the Taj Mahal Palace hotel became the first building in India to get itself a registered trademark under the Indian Trademarks Act of 1999. According to Indian Hotels Company Limited, which owns the hotel, this means that artists or brands seeking to feature depictions of the facade of the Taj in their work have to obtain permission from the company. If permission is granted, IHCL determines the fee to be charged for the commercial use of its trademarked structure on a case-to-case basis.

The trademark restrictions do not apply in non-commercial contexts, such as publishing photos or videos of the Taj Mahal Palace facade in the media.

The aim of getting this “unconventional” trademark, said IHCL’s executive vice president Rajendra Misra, was to “protect and underline the distinctiveness of the brand”. A year after the Taj hotel took this step, the Bombay Stock Exchange Limited followed suit.

In June 2018, the BSE obtained a trademark registration for its 28-storey Phiroze Jeejeebhoy Towers – the landmark synonymous with Mumbai’s Dalal Street. According to a BSE media spokesperson who did not wish to be named, BSE Limited is yet to frame guidelines about the use of the building’s image in non-commercial contexts.

With two of Mumbai’s most-recognised buildings now trademarked, it is possible that more buildings around India might seek image trademark registrations for their structures. But legal experts dealing with intellectual property rights are concerned about the implications of this potential trend on artistic freedom.

Generating revenue

Intellectual property rights are legal protections given to various kinds of intangible “properties” created by the human mind, including inventions, works of art and literature, designs, symbols or names. Perhaps the most commonly known intellectual property right is the copyright, which protects literary and artistic works like books, music, films, paintings, and images, among others. Inventions and innovations are protected by patents.

Trademarks, on the other hand, protect things that distinguish a brand’s identity, such as its logo. Under the Indian Trademarks Act, a trademark should be something that can be graphically represented, and can distinguish the goods and services of one brand from those of other brands. Trademarks can therefore include the colours that constitute a brand’s identity or even a particular shape of packaging.

Getting trademark registrations for building facades is not very common, but some iconic buildings like the Sydney Opera House, the Eiffel Tower in Paris or New York’s Empire State Building are trademarked. At IHCL, Rajendra Misra’s aim was to get the Taj Mahal Palace hotel in this league.

“Getting this trademark is unconventional, but I think it is something we are rightfully entitled to,” said Misra. “A trademark is something that should be distinctive, widely-recognised and associated with ownership. And the Taj hotel can be recognised even if there is no board with its name on it.”

Misra believes that brands and services have many distinguishing aspects that could fall under the wide domain of trademarks. “I do not think the commercial world has exploited that domain well enough,” he said. “There are many unusual things you could trademark and in an increasingly competitive world, it would help businesses to create that space for themselves, to stand out from the crowd.”

Because trademarks can be licensed out to other brands for a fee, Misra also believes it is an opportunity for brands to generate revenue. “The legal team [of a company] is typically looked upon as a cost centre that expends, but does not earn money,” he said. “But our team has done a few deals that have earned revenue for the company.”

Using the Taj trademark

One of IHCL’s trademark licensing deals was with its joint venture partner Starbucks, which launched coffee mugs with the image of the Taj hotel on it a few months after the trademark registration came through. IHCL has also allowed some documentary films to include visuals of the Taj hotel.

In his interview with Scroll.in, Misra did not want to speak about cases in which the hotel’s trademark was violated, but he cited one example. “There was an eatery that was using our image on its walls, and we had to issue a notice and ask them to take down the image,” he said.

This, according to Misra, is standard practice for any trademarked building in the world. “You cannot just take a picture of the Empire State Building and put it in an ad or on merchandise,” he said. “For commercial use, you have to take their permission. They will give it for a fee, but you cannot just use the building’s image.”

With the trademark, IHCL believes it can not only license the use of the Taj image for a fee, but also choose to whom the trademark is licensed out. “Since the Taj represents luxury and top-end quality, we see to it that its image is used on products that are of a particular quality,” said Misra.

IHCL, he said, has at times rejected requests for trademark licensing if it felt that the third party’s product was not of acceptable quality. “We evaluate each case on its own merits.”

Commercial exploitation?

IHCL’s decision raises a question: should artists or brands have to pay a fee for the use of a trademarked building’s image in every commercial context (or face rejection if the company does not like their work)? Some intellectual property rights experts believe that would involve taking trademark law too far.

According to Inika Charles, a lawyer specialising in intellectual property rights in Mumbai, Indian copyright law already grants owners protection over the artistic character and design of buildings and structures. A trademark registration would ideally prevent the use of a building’s image in a very limited commercial sense.

“The general rule of thumb is that trademark registration does not give the owner a universal monopoly over the mark, and trademark registration is subject to certain restrictions,” said Charles.

Under the law, for instance, a registered trademark can be used only “in relation to the goods and services in respect of which it was registered”. The facade of the Taj Mahal Palace, for instance, has been registered specifically in relation to “services for providing food and drink; temporary accommodation”, said Charles.

It would be fair, then, for IHCL to object to another hotel or restaurant using the image of the Taj hotel on its walls or products, experts say. But would it be fair for the company to prevent the free use of the Taj image by other brands not involved in providing food, drink or temporary accommodation? Or by artists depicting the hotel as a Mumbai landmark – a part of the city’s skyline?

Devika Agarwal, an intellectual property lawyer and a policy analyst at the non-profit National Association of Software and Services Companies, believes this would be unfair and restrictive. “When the trademark is used by an artist/brand for merchandising, no one would attribute a drawing of the Taj Mahal Palace, or a t-shirt sold in the market (bearing the image of the Taj Mahal Palace) to the hotel,” said Agarwal. “A reasonable man would know that the hotel is different from the artist who made the painting or the apparel company which sold the t-shirt.”

According to Agarwal, IHCL’s ad hoc nature of licensing the Taj hotel trademark is more in line with patent licensing, where a company holding a patent may negotiate the licensing fee directly with a third party. “Licensing of the trademark to brands or artists is a commercial exploitation of Taj’s trademark which has nothing really to do with the reputation of Taj,” she contended.