Pravin Anand and Geetanjali Visvanathan share insights on one of this year’s star deals
The year 2017 was witness to yet another crowning jewel in the history of the Taj Mahal Palace with the hotel becoming the first private building in India to be trademarked under the Trade Marks Act, 1999. With this feat, Taj Mahal Palace 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 secured intellectual property rights for their distinctive building designs.
The Taj Mahal Palace hotel has always been in the forefront representing India’s rich history and cultural heritage. The hotel which was built even before the Gateway of India in 1903, 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 Taj Mahal Palace hotel has come a long way to becoming the most recognizable building in the country.
As explained by Rajendra Misra, senior vice president and general counsel of Taj Hotels Palaces Resorts Safaris and 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 among the most iconic buildings in the world.”
Taj Mahal Palace secured protection under the Trade Marks Act, 1999, as our Act also protects unconventional marks such as sound marks, color marks, shape marks, image marks including any graphical representation, which have acquired distinctiveness and are capable of distinguishing the good 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, 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 goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. Thus, 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.
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 has been granted in class 43 being services for food and drink; temporary accommodation, under the Nice classification for goods and services. The whole process of registration of the trade arks took around eight months to complete, the applications having being filed in September 2016 and the registrations being granted in May 2017.
The protection granted to Indian Hotels Company Limited, the company which owns the Taj Mahal Palace hotel, restrains any person or entity from making a commercial use of the image of Taj Mahal Palace in relation to goods and services including allied and cognate goods, in the class which registration has been granted. Thus, this 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, John Lennon of The Beatles, Barack Obama and Hillary Clinton. This unconventional trademark protection adds to this long list adding to the rich heritage of the Taj Mahal Palace hotel.
This trade mark protection is indeed a unique accomplishment for the Indian Hotels Company Limited and its lawyers, Anand and Anand, who helped secure this protection. Apart for this first-of-a-kind registration in India, Anand and Anand have also been instrumental in securing many firsts including the registration of the first sound mark and colour mark.