Image Trademark: Taj Hotel the First Indian Structure to be an IT

M.R Mishra
Jun 9, 2024
6 min read

The renowned Taj Mahal Palace hotel in the city has secured an 'image trademark,' becoming the first building in India to receive intellectual property rights protection for its architectural design. This trademark ensures that the commercial use of the hotel's dome and grand exterior image requires permission from Taj Hotels Palaces Resorts Safaris.

An image trademark of a structure refers to the use of a distinctive architectural design or part of a building as a trademark to identify and distinguish the goods or services of one entity from those of others.

This type of trademark can be particularly relevant for businesses that operate out of iconic buildings or structures with unique architectural features.

Key aspects of an image trademark of a structure include:

1. Distinctiveness: The structure must be distinctive and not a common or generic architectural design. It should have a unique appearance that is easily recognizable and associated with a particular brand.

2. Use in Commerce: The structure must be used in a way that identifies the source of goods or services. This means that consumers should associate the image of the structure with the brand’s products or services.

3. Registration: To protect the image of a structure as a trademark, it can be registered with trademark offices. The application would include an image of the structure and details about its use in connection with the brand's offerings.

4. Legal Protection: Once registered, the owner has exclusive rights to use the image of the structure as a trademark and can prevent others from using a similar image that could cause consumer confusion.

Examples

- The Eiffel Tower: While the physical structure is public domain, images of the Eiffel Tower, particularly those taken at night when it is illuminated, can be trademarked for commercial use by the company that manages the tower's lighting.

The Empire State Building: The building's unique design is a registered trademark used in various merchandising and branding efforts.

- Sydney Opera House: Its iconic sail-like design is protected and used in branding and marketing efforts.

Benefits and Challenges

- Brand Recognition: Using a distinctive structure as a trademark can enhance brand recognition and provide a strong visual identity.

- Legal Challenges: Securing and enforcing trademark protection for structures can be complex, particularly if the structure is widely recognized or used in various contexts.

The dome of The Taj Mahal Palace, which stands on the waterfront in south Mumbai, has long been been `triangulation point’ for the Indian Navy which guides its vessels to the harbour. The distinctive red-tiled Florentine Gothic dome, which crowns the elegant Indo-Saracenic arches and architraves of the hotel, sits 240 feet above the street level.

The architects modeled it on the dome of the Victoria Terminus (now Chhatrapati Shivaji Terminus). The hotel opened on December 16, 1903.

Using a structure as a trademark is a strategic way to leverage architectural uniqueness for brand identity and marketing, but it requires careful legal consideration and registration to ensure proper protection.

Trade Marks Act, 1999

Trademark defined under Section 2 (zb) of the Trade Marks Act, 1999 as,

"trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours."

2.Registration of Trademarks

Application: An application for the registration of a trademark must be filed with the Trade Marks Registry.
Examination: The application undergoes an examination to ensure it meets the criteria for registration.
Publication: If accepted, the trademark is published in the Trade Marks Journal to allow for opposition.
Opposition: Third parties can oppose the registration within a specified period.
Registration: If no opposition is filed or if opposition is resolved in favor of the applicant, the trademark is registered.

3. Rights Conferred by Registration

Exclusive Rights: The owner of a registered trademark has the exclusive right to use the trademark in relation to the goods or services for which it is registered.
Legal Protection: Registration provides legal protection against unauthorized use or infringement of the trademark.

4. Duration and Renewal

Validity: A registered trademark is valid for ten years from the date of application.
Renewal: The registration can be renewed indefinitely for successive ten-year periods.

5. Infringement and Remedies

Infringement: Unauthorized use of a trademark that is identical or deceptively similar to a registered trademark in relation to the goods or services for which it is registered constitutes infringement.
Remedies: The owner of a registered trademark can seek remedies such as injunctions, damages, or accounts of profits.

6. Passing Off

Common Law Remedy: The Act recognizes the common law remedy of passing off, which protects the goodwill of an unregistered trademark against misrepresentation that leads to confusion among consumers.

7. Assignment and Licensing

Assignment: The owner of a registered trademark can assign it to another party with or without the goodwill of the business.
Licensing: The owner can license the use of the trademark to others.

8. International Considerations

Madrid Protocol: India is a member of the Madrid Protocol, allowing for international registration of trademarks.

9. Offenses and Penalties

Penalties: The Act prescribes penalties for offenses such as falsifying a trademark, falsely applying a trademark, and selling goods or providing services with a false trademark.

10. Appellate Board

Intellectual Property Appellate Board (IPAB): Disputes related to trademarks can be appealed to the IPAB.

Important Sections of the Trade Marks Act, 1999:

Section 9: Absolute grounds for refusal of registration.
Section 11: Relative grounds for refusal of registration.
Section 18: Application for registration.
Section 28: Rights conferred by registration.
Section 29: Infringement of registered trademarks.
Section 134: Jurisdiction of courts.
Section 135: Remedies in cases of infringement.

This Act provides a comprehensive legal framework to ensure that trademarks are protected and that the rights of trademark owners are enforced, thereby fostering a fair and competitive market environment

What is WIPO?

The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations that is dedicated to promoting and protecting intellectual property (IP) across the world. Here are some key aspects of WIPO:

Objectives

WIPO aims to encourage creative activity and promote the protection of intellectual property throughout the world. Its key objectives include:

Developing a Balanced and Accessible International IP System: WIPO seeks to create an international IP system that is balanced and accessible, ensuring that IP serves as a tool for economic, social, and cultural development.
Providing Global IP Services: WIPO offers a range of global services to protect IP across borders. These services include international patent and trademark registration systems.
Capacity Building and Technical Assistance: WIPO provides assistance to developing and least-developed countries to build their capacity to use IP for economic development.
Policy Development: WIPO is a forum for its member states to negotiate and develop international IP laws and standards.

Key Functions and Services

International IP Registration Systems:

Patent Cooperation Treaty (PCT): Facilitates the filing of patents internationally.
Madrid System: Simplifies the process of registering trademarks in multiple countries.
Hague System: Provides international protection for industrial designs.

IP Dispute Resolution:

WIPO Arbitration and Mediation Center offers alternative dispute resolution services for IP disputes.

Global Databases:

WIPO maintains databases for patents, trademarks, industrial designs, and other forms of IP, providing valuable information to innovators and businesses.

Policy and Legal Frameworks:

WIPO assists countries in developing IP policies, legislation, and infrastructure to enhance the protection and management of IP.

Training and Education:

WIPO offers educational programs, workshops, and seminars to improve understanding and management of IP.

Publications and Resources:

WIPO publishes reports, studies, and guides on various aspects of IP, providing valuable resources to policymakers, researchers, and the general public.

Importance of WIPO

WIPO plays a crucial role in the global IP system by:

Ensuring that IP rights are recognized and enforced internationally.
Supporting innovation and creativity by providing tools and services for protecting IP.
Facilitating international cooperation and harmonization of IP laws and standards.
Helping developing countries use IP for economic growth and development.

By fostering an environment where intellectual property is respected and protected, WIPO contributes to the global economy, encourages innovation, and supports cultural and technological advancement.

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