International In-house Counsel Journal Vol.11, No. 43, Spring 2018, 1

Unconventional Trademarks - Trademarking The Taj!

RAJENDRA MISRA Senior Vice President - General Counsel, Taj Palaces Resorts Safaris,

“The Taj is on such a scale of magnificence and luxury that at first it rather took one’s breath away. There is no other hotel in India which will bear comparison with it, as it is in a rank of its own.” (G.A. Mathews – Diary of an Indian Tour ) Introduction to The Taj The Palace, 1 is the flagship hotel of the renowned Taj group, an Indian hospitality major that owns and manages some of the best hotels, palaces, resorts and safaris in India, apart from other countries like the USA, UK, UAE, South Africa, Zambia, Sri Lanka, Malaysia, Maldives, Bhutan and Nepal. The Taj group is part of the reputed 2, which is a global enterprise headquartered in India, and having a global footprint across 100 nations. The Taj Mahal Palace is one of the most iconic buildings in India. It is a defining structure in the skyline of Mumbai, India’s commercial capital, which is sometimes also referred to by many as the Manhattan of India. The distinctive red-tiled Florentine Gothic dome of the hotel crowns its elegant Indo-Saracenic arches and architraves. The imposing dome of the hotel sits 240 feet above street level. Since 16th December, 1903, when the hotel first opened its doors to guests, its striking dome has served as the triangulation point for the Indian Navy to guide them in the harbor. The hotel sits right on the waterfront, across the , a majestic sight as one sails into the harbor. As a result of world class services and excellent reputation that it has acquired over decades, the hotel has played host to many kings, queens, and other eminent personalities from across the globe. The list includes Emperor George V and wife Queen Mary, the Prince of Wales, Albert Einstein, Beatles John Lenon and George Harrison, former US President , Oprah Winfrey, Brad Pitt and Angelina Jolie to name a few. The famed hotel is a destination of choice for visiting dignitaries, and for celebrities, apart from other people travelling to Mumbai for business or for leisure. The hotel has also become a symbol of humanity’s fight against the global menace of terrorism. On Nov. 26, 2008, terrorists attacked the hotel. For two nights and three days, the Taj lay under siege. However, something extraordinary happened during the siege - none of the Taj employees fled the scene of terror to protect themselves - they all stayed back at the hotel to protect and assist the guests, putting their own lives in grave danger. This tale of heroic selfless service of the employees of Taj is the subject matter of a case study of the Harvard Business Review 3. The story also features in an absorbing TEDx event video 4.

1 https://taj.tajhotels.com/en-in/taj-mahal-palace-mumbai/ 2 http://www.tata.com/aboutus/index/About-us 3 https://hbr.org/2011/12/the-ordinary-heroes-of-the-taj 4 https://www.youtube.com/watch?v=vQGz1YRqBPw

International In-house Counsel Journal ISSN 1754-0607 print/ISSN 1754-0607 online

2 Rajendra Misra

The distinctive nature of the hotel building, its role in representing the country’s rich culture and heritage, coupled with the remarkable reputation of the hotel and its employees (who were the very model of ethical, selfless behavior when it was most required of them) makes the Taj Mahal Palace one of the most recognized buildings in the country. Getting the Trademark – pushing the boundaries The well-known hotel has been in news recently because it has become the first building in India to have acquired a Trademark registration from the Trademarks Registry of the Government of India 5 for its elegant hotel building and for its characteristic dome. The event is path breaking because no other Indian building had till then secured such a registration, and the protection secured is unusual. The mark is not like the usual brand names or logos that are normally registered by companies. Instead, the very image of the hotel building, devoid of any brand name, logo or name board, has been registered by the Taj group as a trademark. That is very unusual – businesses normally do not even contemplate or realize that intellectual property may reside in their building or that an architectural work may be protected in this manner. The normal thrust of businesses is to protect brand names and logos which are being used by them in connection with their commercial activities. But, the world of intellectual property extends much beyond that. Further, in addition to this lack of contemplation / realization, the fact of the matter is that there may not be many businesses who can boast of owning such distinctive structures which may qualify for registration as a trademark. This was, perhaps, one of those uncommon cases where a corporate owned an iconic building, and realizing the potential of the intellectual property residing in the architectural work, initiated action to protect it and secured the trademark registration. With this unique trademark registration, the Taj Mahal Palace has now joined an elite club of iconic buildings from across the globe, viz. the Empire State Building, New York; the Chrysler Building, New York; the Sydney Opera House, Sydney etc., that have been successful in protecting their Intellectual Property Rights, and in securing trademark registrations for their buildings. The Indian trademark is a milestone in the 114 year long journey of this legendary hotel. With this registration, it today rightfully occupies a coveted position amongst some of the most well known buildings of the world. The India Business Law Journal, published by Vantage Asia, characterized the registration of the image trademark for the Taj Mahal Palace, Mumbai as one of the ten Star Deals in India in the year 2017 6, alongside M&A and other fundraising deals. As per Vantage Asia, “In deciding the winning deals and cases, our editorial team evaluated the significance of all shortlisted contenders from a legal and regulatory standpoint. Deals were chosen not only for their size, but for the novelty and complexity of the transaction or case and for any precedents that may have been established.” The development was reported by the International Trademark Association (INTA) 7 in its bulletin too, and has also drawn positive commentary from prominent Intellectual property lawyers, law firms 8 and legal journals. Please refer to the India Business Law Journal website 9 and at the Lex Protector website 10 by way of example.

5https://timesofindia.indiatimes.com/city/mumbai/taj-palace-first-building-to-get- trademark/articleshow/59210141.cms 6 https://www.vantageasia.com/india-deals-of-the-year-2017/ 7 https://www.inta.org/INTABulletin/Pages/India_7219.aspx 8 http://www.unitedipr.com/taj-mahal-palace-trademark/ 9 https://www.vantageasia.com/trademarking-the-taj/ 10 http://www.lexprotector.com/taj-palace-hotel-sets-new-example-indian-trademark-regime/

Unconventional Trademarks 3

Unconventional Trademarks This image mark is a very unusual and unconventional trademark, and its registration is the outcome of a pioneering effort and out of the box thinking. Section 2 (1)(zb) of the Indian Trade Marks Act, 1999 defines a “Trademark” as follows: “(zb) "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; …” The essential elements of a ‘trademark’ are that it should be capable of being represented graphically and should be capable of distinguishing the goods or services of one person from those of others. Section 2 (1) (m) of the Indian Trade Marks Act, 1999 defines a “mark” as follows: “(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;” It is notable that the definition of a “mark" is an inclusive definition , and not an exhaustive one. Therefore, in order to understand the meaning of the expression “mark” as used in the Indian Trademarks Act, we will need to refer to its dictionary meaning. The Merriam-Webster dictionary defines “mark” as a “symbol used for identification or indication of ownership” 11 . What follows from the above discussion is that any mark / symbol that is capable of indicating ownership , which can be graphically represented and is capable of distinguishing the goods/services of one person from those of another could be used and registered as a trademark. While corporate logos and brand names are commonly registered as trademarks by organizations, sound, colour, shape of goods, aroma/ fragrance etc. can also be used and registered as trademarks if they satisfy the twin criteria of being capable of graphical representation and being capable of distinguishing goods/services of one person from that of another person. Let us ask ourselves the question - is it likely that we may be tempted to purchase a specific brand of tea as opposed to its competition if we heard a pleasant and familiar jingle / music associated with it - because we may associate such jingle / music with that particular brand of tea, and may recall pleasant memories of the past when we had consumed it? How about a watch with a pleasant fragrance, which may obviate the necessity of wearing fragrance on the body? Would you prefer to package your product in a distinctive shaped packaging, such that it stands out on the shelf and attracts consumer attention? Maybe you would prefer a very distinctive combination of colours for your product packaging, very different from anything else in the market, and something which will immediately catch the attention of your consumer. These are only some of the subtle ways manufacturers can get customers to recognize their products in the crowded retail space – in the trademarks language, identify ‘source of origin’ of the goods. These unique sounds, aroma/ fragrance, colour combination, shape etc. all serve the same purpose – they are capable of distinguishing the goods/services of one person from those of others and, thus, can be protected as trademarks. The IP world has some instances of protection of such unconventional intellectual property. For example, MGM secured registration for the lion roar which precedes its movies. Yahoo! registered the Yahoo! yodel. Christian Louboutin claims trademark rights in the red sole of its footwears. Cadbury’s has secured registrations for the shade of purple colour (pantone 2865C) which they use for chocolate packaging. The distinctive

11 https://www.merriam-webster.com/dictionary/mark

4 Rajendra Misra shaped glass bottle of Coca Cola is a trademark. None of these require a brand name on them in order to convey source of origin to consumers; they are a brand / trademark in themselves! Now take the specific case of the Taj Mahal Palace. One does not need a signboard on the iconic building to identify that it is The . Such is its distinctiveness. Due to its world class services, the hotel has acquired tremendous goodwill and reputation. It represents the finest in hospitality traditions of India. The hotel has received and continues to receive accolades and awards from across the world for its world class services and restaurants 12 . To illustrate, the hotel is featured on the Gold list of Conde Nast Traveler- U.S edition, a compilation of the top 50 hotels in the world. It was also voted the Favourite Business Hotel in India at the Condé Nast Traveller Readers’ Travel Awards 2014. The Daily Telegraph ranked The Taj Mahal Palace, Mumbai amongst the 50 Greatest Hotels of the World (January 2016). As such, the hotel is quite distinctive, and is identified / associated exclusively with the Taj group of hotels. The hotel is, thus, a great example of a “Trademark”. Trademarks –vs- Copyrights – making the right choice in this case Architectural works such as the Taj Mahal Palace can be protected under the Trademarks law, as well as under the Copyrights law. The question to ask then is – which protection should one avail? Under the Indian law, copyright subsists in original architectural works, since they come within the ambit of “artistic work”. This protection, however, is subject to several fair use exceptions such as private use exception and reporting of current events. “Freedom of panorama” is an exception to the protection granted by copyrights. Such exceptions include the following: • the making or publishing of any painting, photographs etc. of an architectural work; • the inclusion of an artistic work permanently situate in a public place or any premises to which the public has access in a cinematographic film • any other inclusion of artistic work in a cinematographic film, if it is the background or incidental to the principal parts in the film Thus, the protection afforded by copyrights law for architectural works appeared to be inadequate; particularly keeping in mind the fact that a business organization may not be open to unauthorized commercial exploitation of its architectural work by third parties through publication of photographs, cinematograph films, or commercial merchandise etc. Moreover, the other important factor to keep in mind is the fact that any protection under copyrights law is time bound. As opposed to the above, the protection under trademarks law is wider. First, the protection is, in practice, not time bound because trademark protection can be extended from time-to-time indefinitely. The value of a trademark lies in its longevity. Secondly, in the event of any commercial use of the trademark without permission of the owner, the same would amount to infringement of trademark and the owner can take steps to protect his rights. For companies that heavily invest in their brands, a trademark makes it easier and cheaper to prevent infringements and copycat imitations. Of course, the hurdle to cross for obtaining this superior protection would be to prove distinctiveness of the trademark sought to be protected. In the case of the Taj Mahal Palace, the intent was to protect the distinctiveness of the hotel. One of the objectives was also to become better equipped for preventing unauthorized use of images of the hotel on commercial merchandise, in advertisements

12 https://taj.tajhotels.com/en-in/taj-mahal-palace-mumbai/awards/

Unconventional Trademarks 5 and in cinematograph films. In addition, the objective was also to secure a protection which was not time bound. Therefore, the choice was obvious in this case – it was to secure a trademark registration. In balance, however, there is no ‘one size fits all’ here, and each one has to weigh all aspects of the matter before deciding upon whether to seek protection under trademarks law or the copyright law. Out-of-the-box thinking We are frequently asked the question as to how did we get the idea to register the image mark of Taj Mahal Palace. At the outset, I must say that we adopted a proactive approach in appraising our intellectual property to identify scope of further protection, as against adopting a reactive approach. It is not necessary that a Legal department must commence action only upon receiving a requisition from the business teams. Legal departments of top organizations must continuously be on the lookout for newer and better ways to protect their organizations and their rights, including their intellectual property rights. The pursuit of this mission in this particular case led to the above image mark registration for The Taj Mahal Palace. We looked at our Intellectual Property portfolio and asked ourselves the question whether the protection obtained in the past is comprehensive, whether we are protecting everything that we should, and is there scope to do anything further and anything better. At first sight, the answer seemed very obvious - that what had been done in the past was adequate, and nothing further need be done. But a more deep analysis revealed that the company had been sitting on this fantastic intellectual property, which it had never sought to protect. To be fair, perhaps people did not even recognize or realize that it was an intellectual property, and that it could be protected in this manner. The hotel was iconic, it was well known, but people probably just did not identify that the hotel was a Trademark all by itself, without any branding or logo! Thus, some proactive, out-of-the-box thinking brought about a golden opportunity for the organization to become the first Indian company to obtain an image mark registration in India for its building. This not only enhanced the level of IP protection secured by the company, it also attracted a lot of attention in the media and legal circles, getting great publicity for the organization. That brings us to the next point – that the Legal department need not necessarily be a cost centre always. The Legal department can also contribute as a profit centre / revenue earner to the organization by innovative thinking and proactive actions. This registration was also an outcome of an intense desire to create value for the organization. What is required is out-of-the box thinking, a creative approach, and a constant lookout as to how value can be created for / added to the organization. The image trademark registration of Taj Mahal Palace, Mumbai, is a perfect example of how the Legal Department can create value for the organization. In this case, for example it would be possible for the hotel to come up with signature merchandise, encashing the value of its intellectual property. Moreover, the image mark registration has also created an avenue for monetizing the intellectual property of the organization through licensing arrangements. Not surprisingly, almost as soon as the image trademark of Taj Mahal Palace was registered, we received our first query from a third party, seeking a license to use the image of the hotel. Starting from a situation where the images of the hotel were used indiscriminately without any qualms by anyone and everyone, we had travelled a long way! The query was from a responsible business house, and we were happy to grant license rights to them, thereby earning the first revenue for our organization by licensing the image mark! From a mere cost centre, we had begun taking our first steps towards also earning revenue for the company. Needless to add, we have been receiving subsequent queries, and have been engaging with parties who are desirous of using the image of the iconic hotel.

6 Rajendra Misra

In conclusion It is a crowded marketplace out there, and competition is only going to increase. In such a crowded marketplace, becoming even more crowded with every passing day, how does one stand out from the crowd? How does one get his voice heard by customers over the cacophony of competitors, especially in a world where increasingly, ‘quality’ is becoming less of a differentiator? The answer to this question perhaps lies in capitalizing upon the value of unconventional trademarks. Such unconventional trademarks represent the USP of companies and their products, and can create great value for the organization. Being beyond the ordinary, they can become great talking points for businesses. For a very long time now, organizations have been using conventional intellectual properties in order to attract the attention of customers. The industry must now realize the novelty and potential of unconventional intellectual properties like sound marks, colour marks, shape marks, aroma / fragrance marks etc., and utilize them in order to stand out from competition. Protection of unconventional trademarks has always been an interesting issue, since they add tremendous brand value to the business due to the enhanced power of recollection they effectuate. Conventional intellectual property has for long ruled the roost; it is perhaps now unconventional intellectual property that can create the market differentiators for the business. This can take intellectual property protection to the next level, and open up newer marketing strategies for companies. The Legal department can play a great role in all this by doing some out of the box thinking, adopting a proactive approach towards protecting the rights of the organization, and by helping monetize its intellectual property. Mr. Rajendra Misra is the Senior Vice President - General Counsel of the Taj group, an Indian hospitality major that owns and manages some of the best hotels, palaces, resorts and safaris in India, apart from other countries like USA, UK, UAE, South Africa, Zambia, Sri Lanka, Malaysia, Maldives, Bhutan and Nepal. Mr. Misra is a member of the Executive Committee of the Taj group. Mr. Misra is a graduate in Law and holds a Post Graduate Diploma in Patents Law. He has undertaken the Hawkesmere Course on International Intellectual Property Law in London. He is featured in the “GC Powerlist: India 2016” amongst the leading General Counsel of the country by The Legal 500, which publishes the GC Powerlist. He is also featured amongst the leading General Counsel in “Trailblazers: India’s Finest In-house Counsels” by the Indian Corporate Counsel Association. Prior to joining the Taj group, Mr. Misra was working with Hindustan Unilever Ltd., the subsidiary of Unilever plc in India. He has more than 26 years of experience in the legal field, having started his legal career as a counsel practicing in the High Court in India. Later, he moved inhouse and has gathered experience in the legal field across industries, having worked inhouse in leading organizations in the Aluminium industry, Tyre industry, FMCG industry and now the Hospitality industry. Palaces Resorts Safaris is the most reputed hospitality major in India, with presence in UK, US, UAE, South Africa, Zambia, Malaysia, Maldives, Sri Lanka, Bhutan and Nepal. The Taj Mahal Palace, Mumbai is its flagship hotel - an iconic hotel property and a destination of choice for those visiting India. Taj Hotels Palaces Resorts Safaris is part of the Tata group, which has a global footprint across 100 countries in six continents, with 7,00,000 people working for the group. Sixty-six percent of the equity share capital of the holding company Tata Sons is held by philanthropic trusts, which support education, health, livelihood generation and art and culture. In the words of , the founder of the group, “In a free enterprise, the community is not just another stakeholder in business, but is in fact the very purpose of its existence.” Those are the values and purpose which inspire each employee of the group every single day.