Trademarking the Taj!
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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 Hotels Palaces Resorts Safaris, India “The Taj Hotel 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 Taj Mahal Palace, Mumbai 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 Tata group 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 Gateway of India, 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 Barack Obama, 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.