Generally, trademarks are only given to corporate names and logos, businesses that provide consumer goods and services, or the actual products themselves. This is done to shield these businesses from competing ones that could try to benefit from their goodwill and brand recognition. One must accept the reality that trademarking for buildings is the norm around the world. Famous monuments like the Sydney Opera House in Australia, the Eiffel Tower in Paris, and the Empire State Building in New York, to mention a few, have trademarks.
Yet why? Why would you trademark an architecture?
One of the reasons to trademark a structure is to prevent an identical replica of the architecture design, safeguard the structure's distinctive design, and maintain its heritage and originality. 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. Consequently, it can be inferred that there are no restrictions on the registration of any kind of trademark.
THE TRADE MARKS ACT, 1999:
- A "mark" is defined as a "device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof" in Section (2)(m) of the Trade Marks Act, 1999.
- As a result, the Act broadens the protection of an architectural design to include a certain range of goods and/or services.
- According to the Trade Marks Act of 1999, a building must be capable of distinguishing the goods and/or services provided by the trademark owner from those of others in order to create a strong inference of identifiability with the owner of the trademark wholly and exclusively to the exclusion of others and secure a successful trademark registration.
- Protection of trademark is granted in perpetuity as long as the registration is renewed in every 10 years.
THE COPYRIGHT ACT, 1957:
According to Section 2(c)(ii) of the Copyright Act, 1957, and as defined as "work of architecture" means "any building or structure having an artistic character or design, or any model for such a building or structure," as per Section 2(b) of the Copyright Act, 1957, Section 13 of the Copyright Act, 1957 expressly extends copyright protection to "artistic works," which specifically includes "works of architecture."
The Act also codifies the concept of "fair use" and specifies acts that do not violate the copyright of "works of architecture" under Section 52, in particular Section 52(s), which allows for the creation or publication of paintings, drawings, engravings, or photographs depicting works of architecture as well as their display, and Section 52(u), which "permits the inclusion in a cinematograph film of: If any artistic work accessible to a public place, (ii) any work of architecture which is included due to its history or is projected in a film.
However, Section 59 of the Copyright Act of 1957 places a restriction on remedies in the case of "works of architecture," which states that the owner of the copyright is not entitled to obtain an injunction to stop the construction of such a building or structure or to order its demolition when construction on a building or other structure that violates or would violate the copyright in another work has already begun. The sole recourse accessible to the copyright owner will be monetary compensation and legal action. The owner of the copyrighted building cannot demand special redress.
An artistic production, such as a "piece of architecture," is subject to copyright protection for a period of 60 years commencing on the first day of the year after the author's passing.
Because of this, it is nonetheless important for architects to file copyright applications in order to establish a presumptive case in the event of a lawsuit for infringement, despite the fact that the copyright legislation, which is fairly strict, does not provide substantial protection to architectural works.
Which buildings are trademarked?
- The Rock & Roll Hall of Fame in New York's architectural style was registered as a trademark in the USA in 1996. It allowed them to market and sell promotional items with the building's emblem exclusively.
- In 2017, the Taj Mahal Palace Hotel in Mumbai, which is owned by the India Hotels Company Limited (IHCL), became the first structure to be registered as a trademark in India under trademark class 43 (services for delivering food and drink), surpassing the Space Needle.
- ESRT Empire State Building LLC also obtained trademark registration for the Empire State Building, which allowed it to successfully block Michael Liang, a beer manufacturer, from registering the trademark logo that used the image of the aforementioned building as its logo to sell alcoholic beverages because it led to confusion regarding the source of the goods given that the Empire State Building had a gift shop that sold liquor. (TTAB (2016) in ESRT Empire State Building, LLC v. Michael Liang).
- A well-known trademark from Seattle, the Space Needle, was registered in 1962 for a wide range of products and services.
- The Eiffel tower owns a trademark for its lighting design but not the renowned Eiffel Tower itself. As a result, more than just structural elements can be safeguarded.
- In 2013, Apple obtained trademark registration for the store's interior architecture and layout. Yet, the trademark used to reserve a right won't provide broad protection for all uses of such protected buildings. The above-mentioned case of Rock and Roll Hall of Fame and Museum, Inc. vs Gentile Productions established a well-known precedent. In this instance, a photographer created a poster using the image and name of the building together with the photographer's name without obtaining permission. The court decided that the defendant's adoption constituted fair use because there was little chance of mistake. Additionally, due to its inherent distinctive qualities, the claimed work of architecture should have an established reputation or secondary significance linked to it in order to provide protection. In the case of New York Racing Association Inc. v. Perlmutter Publishing Inc., the court determined that the defendant's use of horse racing scenes from the Saratoga Race Course to market their t-shirts did not violate the plaintiff's trade-dress because the copied feature wasn't inherently distinctive.
How can a building be Trademarked?
• 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 be distinctive, which means that it should be simple for many people to recognise.
• The structure should represent a brand that links a source to a good or service.
Once trademark protection is established, a structure or piece of architecture can reap numerous financial rewards and keep others from taking advantage of the architectural design.
What can be considered a trademark infringement of an architectural design?
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.
Economic benefits of trademark protection: Empire state building vs NYC beer – A case study
To stop others from taking advantage of the financial benefit of the architectural design, a building with a distinctive and widely recognised architectural design may submit a trademark application. For instance, in 2016 ESRT Empire State Building LLC, the company that has owned the trademark for the Empire State Building since 1931, filed an opposition to the trademark application for the sale of alcoholic drinks made by NYC Brewery.