The architects who create a building’s architectural designs are so talented, creative, and original, shouldn’t they also be given recognition and legal protection for their work? The main objective is to establish their reputation, reap financial rewards, and prevent fraud by others ripping off their designs. To protect the distinctive design and heritage of a building, as well as prevent an identical replica of the architecture design, it may be beneficial to trademark buildings or its design under trademark laws pertaining to architectural works.
The term “trademark” refers to the ability to visually distinguish one mark from another. It encompasses all the marks listed in the Trademark Act’s Section 2(m) definition. Thus, this article is concerned with the question of whether or not Buildings are covered by this Act.
Trademarking a Building
A building’s architectural design is thought to be the element that can be patented. It is so because it is regarded as a genuine work of art and an example of creativity. For a design to be protected under this Act, it must be able to be represented graphically and be distinctive enough that the public would likely get confused if it were to be imitated. The buildings also receive recognition under the protection of this Act, which aids in the growth of reputation and goodwill.
The process of designing and constructing buildings involves a combination of artistic expression, technical skill, and innovative ideas. As such, the protection of intellectual property in various forms is crucial in safeguarding the economic and moral rights of the creators and proprietors of architectural works.
There are two reasons why buildings need to be protected: –
- The design of a building may be unique and serve as a cultural representation, making it essential to protect the intellectual property rights associated with it;
- Protecting a building from being copied or replicated, also known as ‘copycat architecture’, is crucial in preserving its unique and distinctive design.
In the field of architectural works, a building can be protected for its distinctive design, construction features (internal and external), decor and layout under the term Trade-Dress, but not against functional features, i.e., those features that are necessary for the use or purpose of the article or have an impact on the item’s price or quality. Any name, label, logo, heading, symbol, etc. that may be associated with the architectural work may also be protected. Indian trademark law is based on the English Trademarks Act, 1994 , which has acquired trade dress provisions from the Lanham Act. The concept of trade dress protection has been reflected under Section 2(1)(zb) of the Trademarks Act, 1999.
A trademark may either be owned by an individual person or an artificial person like a business, LLP, etc. Identification of a creator or proprietor is therefore crucial.
Evolution of Trademark of Buildings
The case of White Tower Sys. vs. White Castle Sys. Of Eating House Corp. is one of the earliest instances in which recognition was given to buildings to be protected under the Act. White Castle is a fast-food restaurant that the defendants opened in Kansas. A few years later, the plaintiff created a comparable eatery by lavishly paying off White Castle staff members to reveal secrets about the structure (to take photographs of it) and their trade secrets under the guise of White Tower. In a few more years, both businesses expanded to Detroit. As a result of their comparable structures (both were white, built like castles, had similar slogans, and names), it caused a misconception in the minds of the public. In this instance, the court ruled that the person having priority over a distinctive feature has the right to protection. Thus, the verdict favored White Castle Sys. Of Eating House Corp.
Furthermore, the idea of well-known trademarks can also be used. Well-known Trademarks fundamentally refer to the protection of a good’s trademark simply because it has become famous enough among a sizeable percentage of the public, such that any replication of it is likely to lead to confusion in the public’s minds. Although this hasn’t been done yet, a well-known trademark like the Eiffel tower may be recognized. The difference between this trademark’s protection and the others is that it is not limited to a certain region or set of goods and services. In other words, it will be safeguarded across the entire nation and for all types of goods and services. A trademark, such as the Eiffel Tower, would then be protected even from being printed on t-shirts, caps, or other products and services. Even the right to click pictures might be affected this way.
Right To Click Pictures of Trademark Buildings
An individual’s freedom to take photos is still protected as long as they utilize them for personal projects; they are even allowed to turn them into artwork like paintings. Only if these are exploited for commercial gain will it be regarded as trademark infringement. Also, it should be observed that trademarking a building enhances its goodwill and reputation, which boosts revenue. The monopoly right to use photographs of their works for commercial purpose is granted to the owner of the architectural design.
Right To Public Heritage
The ability to utilize, preserve, enter, visit, and profit from one’s cultural heritage is referred to as this right. The provision of fair use is absent from the trademark act, in contrast to the copyright act. The primary drawback of this Legislation is that it denies individuals the right to their cultural heritage. For instance, Hyderabad is proud of its Charminar. It could not be used anywhere if it were trademarked, without permission and without paying royalty, even if it were to be used in a fair manner.
Historical Legislation Regarding The Trademark of Buildings
Indian Hotels Company Ltd. (IHCL) introduced a ground-breaking component to the Trademarks Act, 1999, in 2017. The Taj Mahal Palace Hotel’s structure and architectural vision were registered as trademarks. While other nations, including the USA, France, and Dubai, already have trademarks for major buildings — the Empire State Building, Eiffel Tower, and Burj Khalifa, respectively — this was the first structure to get trademark protection in India.
It holds a trademark under class 43, which is services for supplying alcoholic beverages and food. It is considered to be a non-conventional trademark. Non-conventional trademarks are those that, despite being difficult to register as a trademark due to their odd nature, have the quality of being distinctive and the ability to set themselves apart from the goods and services of others. Unconventional trademarks are, to put it simply, those that are not standard trademarks.
The famous Taj Mahal Palace Hotel in Mumbai, which is 114 years old, received a registered trademark on June 19, 2017—making it India’s first trademarked building ever. This is fascinating, right? Due of this, prior authorisation is required before using a photograph of the building’s iconic dome or façade for commercial purposes. The Taj Mahal Palace Hotel has gained a great deal of worldwide recognition as a result. They are thereby shielded from the architectural design’s use, appropriation, and copying. However, the class of goods listed in trademark class 43 are the only ones covered by the protection offered by this registration. The IHCL now has the authority to provide authorization for the use of the photographs or paintings for commercial purposes and to impose fees for doing so.
Commercial Use and Trademark Infringement
The question arose whether there is any restriction on commercial usage, or does the infringement of building trademarks include all commercial use? This is a crucial topic. The general rule for trademarks is that they do not grant an absolute monopoly; rather, the protection is restricted to the class of items for which they have been registered. For instance, IHCL has secured trademark registration for Taj Mahal Palace Hotel under class 43 – service for providing food and drinks, which begs the question of whether it would be just for IHCL to forbid using the Taj image without paying for it by other companies that don’t deal in service of supplying food and drink? Or perhaps by painters who portrayed the hotel as a landmark in Mumbai and a feature of the skyline?
According to intellectual property attorney Devika Agarwal, no one would link a sketch of the Taj Mahal Palace or a t-shirt with the hotel’s picture to the Taj Mahal Palace Hotel when the trademark is used by an artist or brand for merchandise. A sane person would understand that the hotel is distinct from the painter who created the painting or the retailer who sold the t-shirt.
A trademark violation can be evaluated based on a few factors: –
- The building should not be used for editorial purposes. Using a building’s image in a newspaper wouldn’t be unlawful. Yet, using a building’s picture to promote another product may be against the trademark.
- Third parties using a trademarked structure to promote identical or misleadingly similar products or services may be infringing. Mc Donald’s cannot use a picture of a KFC restaurant in their marketing to promote hamburgers because it can cause misunderstanding among consumers.
Trademark Protection of Architectural Designs under Trade Marks Act
According to Section 2(m) of the Trade Marks Act, 1999, the term ‘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”. Thus, architectural designs of buildings can be covered under the ambit of marks and are entitled to get trademark protection.
The registration of architectural designs as trademarks is not explicitly covered under The Trademarks Act, 1999. However, it is possible to draw an inference under Section 2(1)(zb). This section states that any mark which can be graphically represented and has distinct qualities that differentiate itself from the goods or services of another can be trademarked. Therefore, in order for architectural works to be eligible for trademark protection, they must be capable of being graphically represented and serve as an indication of their source. This requirement is a necessary condition for the protection of architectural designs as trademarks.
According to the Trade Marks Act of 1999, a building may be eligible for trademark registration if it can be easily identified by consumers as the source of specific goods or services. This means that the goods or services provided by the owners of the building must be clearly distinguishable from those provided by others. The trademark should be exclusively associated with the owner and others should not be allowed to use it. Therefore, it is essential to identify the originator or proprietor of the trademark.
Pre-requisites for granting trademark protection to an architectural design of a building: –
- Graphical Representation: – The graphical representation of a trademark is a crucial aspect of its protection in commerce. For a building design or feature to be eligible for trademark registration, it must be possible to graphically represent it, meaning that the mark should be capable of being depicted or recorded on a tangible medium, such as paper.
- Distinctiveness: – The criterion of distinctiveness is the key to getting trademark protection under the Trademarks Act. The design of the building should be unique to be eligible for protection against third-party use.
- Capable of distinguishing the goods and/or services: – The identification of a building to be exclusively associated with the owner of the trademark, and for the goods and/or services provided by the proprietor to be easily distinguishable from those provided by others. It is, however, essential to associate the said logo of the architectural work with goods and/or services.
- The building must either be owned by an individual or a business in order to be eligible for trademark protection for an architectural design.
- The structure should represent a brand that links a source to a good or service.
Other Legislations Regarding The Trademark of Buildings
In addition to Trademarks Act, other Indian legislations also entail provisions to extend protection to buildings and their architecture under their ambit. There are other Acts such as the Copyright Act of 1957 and the Designs Act of 2000, that offer protection for a building’s layout or structure.
Architectural works are considered artistic works under Section 2(c)(ii) of the Copyright Act, 1957, and are protected under Section 13(1)(a) of the same Act. Copyright also includes the provision of fair use under section 52. The definition of “design” in Section 2(d) of the Designs Act, 2000 makes it abundantly clear that architectural designs fall under this heading and thus, they receive protection even under this Act.
A critical question that arises is: What type of Intellectual Property Right should one seek when registering a building’s unique features?
Copyright protects the artistic elements of a building, while design registration can increase the commercial value of the property. Trademarks, on the other hand, not only generate revenue through licensing fees for non-commercial use of the building’s image but also help to establish the building’s association with its owner and maintain its status as a landmark. The Trademark Protection of an Architectural Design protects the design, feature or other aspects of the buildings and structures by barring other individuals/firms to copy that design. Additionally, trademarks offer longer protection than copyright or design registration.
Case Laws on Trademark Buildings
- In the case of Microfibers Inc. vs. Girdhar & Co. & Anr., it was made clear that if a person registered a design under the Designs Act, they would lose their copyright protection; however, if they had not yet done so and the design was not yet registered under the Designs Act, they would still have their copyright protection as long as the industrial limit of more than 50 reproductions was not exceeded.
- Another idea that has gained admiration recently in India is trade dress. It was initially included in the Lanham Act of US law. It mostly refers to the property’s appearance, traits, construction, design, etc. In the case of Taco Cabana International, Inc. vs. Two Pesos, Inc., the court determined that the plaintiff’s design of a festive-themed restaurant with festive decorations and the recognizable color scheme constituted an enforceable trade dress since it was intrinsically distinctive. Most often, copying a single element of another person’s trade dress does not constitute infringement; but, when all of a trade dress’s elements are used together, the law will be violated.
- In the case of Dunkin’ Donuts Franchised Restaurants LLC v. D&D Donuts, Inc. (566 F. Supp. 2d 1350 (2008)), the Hon’ble Court laid down that the trade dress protection should be extended to the décor, layout, and style of the retail outlet of Dunkin Donuts stores because of their distinct building design and unique colour schemes of their exterior and interior décor.
Buildings’ architectural designs that combine innovation and creativity have improved how people view art and its distinctiveness, which goes beyond the essential tasks of sheltering, storing, and protecting people. As trademarks can be utilized to the owner’s advantage to exclusively use the symbols, drawings, characteristics, or components of the building, intellectual property rights have become of the utmost importance.
With the aid of the aforementioned article, we can comprehend that Buildings’ trademark was eventually recognized in India in 2017. The Taj Mahal Palace Hotel has undoubtedly ushered in a new era for the growth of trademark protection as the first Indian structure to receive an image trademark, and there will undoubtedly be a deluge of applications seeking trademark protection for their building in order to protect their distinctiveness. Thus, Trademark Act,1999 is inclusive of Buildings. However, this is still in the infant stage and has a long way for its development.
 90 F.2d 67
 (2009) 40 PTC 519 Del
 505 U.S. 763 1992
ABOUT THE AUTHOR:
Gunjan S Jain | St. Joseph’s College of Law