Crowning jewel in protection of unconventional trademarks

By Pravin Anand and Geetanjali Visvanathan, Anand and Anand
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The year 2017 was witness to yet another crowning jewel in the history of the Taj Mahal Palace hotel, as it became the first private building in India to be trademarked under the Trade Marks Act, 1999. With this feat, the Taj Mahal Palace hotel has joined the ranks of iconic architectural marvels around the world including the Empire State Building, the Chrysler Building and the Sydney Opera House, which have all secured intellectual property rights in their distinctive building designs.

Pravin AnandManaging partnerAnand and Anand
Pravin Anand
Managing partner
Anand and Anand

The Taj Mahal Palace hotel has always been at the forefront of representing India’s rich history and cultural heritage. The hotel, which was built in 1903, even before the Gateway of India, has been serving as a distinctive symbol of Mumbai’s skyline for more than 114 years. Serving as a triangulation point for the Indian Navy to show the way towards the harbour, the hotel has come a long way to being the most recognizable building in the country.

As explained by Rajendra Misra, senior vice president and general counsel of the Taj Hotels Palaces Resorts Safaris, of the vision behind this protection: “One does not need a signboard on the iconic building to identify that it is the Taj Mahal Palace hotel. Such is its distinctiveness. It is, thus, a perfect example of a “trademark” and, with this registration, it today rightfully occupies a coveted position amongst the most iconic buildings in the world.”

The Taj Mahal Palace hotel secured protection under the Trade Marks Act, 1999, as the act also protects unconventional marks such as sound marks, colour marks, shape marks, and image marks, including any graphical representation, which have acquired distinctiveness and are capable of distinguishing the goods and services of one person from another. Section 2(m) of the act defines a “mark” as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral or shape of goods, packaging or combination of colours thereof. Similarly, section 2(z)(b) defines a trademark as 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. The scope of protection under the Trade Marks Act in India is wide, provided that the mark satisfies the basic requirement of having acquired distinctiveness, so as to indicate a connection in the course of trade between the goods or services on which the mark is used, and the person having the right as proprietor to use the mark. The Taj Mahal Palace hotel satisfies these criteria.

Geetanjali VisvanathanSenior associateAnand and Anand
Geetanjali Visvanathan
Senior associate
Anand and Anand

The Indo-Saracenic arches and architraves of the hotel, along with its exterior tower wing and the unique red-tiled Florentine gothic dome, have become iconic and thus have been granted protection under the act. The protection was granted in class 43, being services for food and drink, temporary accommodation, under the Nice classification (NCL) for goods and services. The whole process of registration of the said trademarks took about eight months to complete. The applications were filed in September 2016, and the registrations were granted in May 2017.

The protection granted to Indian Hotels Company Limited, the company that owns the Taj Mahal Palace hotel, restrains any person or entity from making a commercial use of the image of the Taj Mahal Palace hotel in relation to goods and services including allied and cognate goods, in the class that registration was granted, so the registration in no manner precludes an individual or a tourist from clicking photos for private and non-commercial use.

The hotel with its glorious history has had many firsts. It was the first hotel in India to have electricity, the first hotel to have a licensed bar, the first hotel to have an elevator, the first to be converted into a hospital, during World War I. The hotel has also served as a second home to distinguished dignitaries such as Albert Einstein, the Wright Brothers, Neil Armstrong, The Beatles’ John Lenon, Barack Obama and Hillary Clinton to name a few. Unconventional trademark protection adds to this long list, and adds to the rich heritage of the Taj Mahal Palace hotel.

The trademark protection is indeed a unique accomplishment for the Indian Hotels Company Limited and its lawyers, Anand and Anand, who helped secure this protection. Apart from this first-of-a-kind registration in India, Anand and Anand have also been instrumental in securing other firsts, including the registration of the first sound mark and colour mark.

Pravin Anand is the managing partner at Anand and Anand, and Geetanjali Visvanathan is a senior associate at the firm

Anand and Anand

Anand and Anand

B-41, Nizamuddin East,

New Delhi 110013, India

www.anandandanand.com

Contact details:

Tel: +91 120 405 9300

Email: Pravin@anandandanand.com

Email: Geetanjali@anandandanand.com