The very
definition of a trademark under Indian law stresses the need to be “graphically
represented”, i.e. in a two-dimensional form. Section 2(1)(zb) of the Trade
Marks Act, 1999 defines a trademark as -
“…a mark capable of being represented graphically and which is capable
of distinguishing the goods or services of one person from those of others…”
Such a mark may include: “…a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof.”
These
requirements exist for entirely practical reasons. Representations must clearly
demonstrate the nature of the mark and show each feature clearly enough to
permit proper examination, and thereafter, must allow the ordinary consumer to
comprehe
nd what is being claimed as a trademark. For a non-traditional
trademark, such as a colour, shape, sound or smell, the application must
include a concise and accurate description of the trademark, whether as a
written description, or in the form of a picture. This description is not a
mere formality and in fact plays an essential role when considering the role of
the mark in trade.
However, with
changes in society, technology and the paradigms of representation, what
constitutes a trademark has been evolving over the last few decades, and perhaps
has even more evolving to do. The Indian trademark law has already recognized
three-dimensional or shape marks, as well as the packaging and “trade dress” of
goods. The recently announced Trade Mark Rules, 2017, have taken a further step
by including “sound marks” within the ambit of what may now qualify as a
trademark. Rule 26 of the new Trade
Mark Rules now provides for the representation of sound marks as applicable
trademarks. In this respect, a sound mark application may be submitted “…in
the MP3 format not exceeding thirty seconds’ length, recorded on a medium which
allows for easy and clearly audible replaying accompanied with a graphical
representation of its notations”. Thus, we see that even with regard to sound marks, graphical
representation has not been completely done away with. The sound will need to
be represented “graphically” in the form of musical notations.
Yet another milestone in Indian trademark
law was achieved with reputed newspapers recently claiming that Taj Mahal
Palace Hotel in Mumbai became the first building in India to achieve trademark
protection for its architectural design. While the provision to
copyright architectural plans and layouts (which we shall discuss at length
subsequently) has been around for quite some time, ‘trademarking ‘buildings and
other architectural designs has been a hotly debated topic all around the
world, with the principal question being whether they qualify for such
protection, and what the granting of such rights to an architectural structure
would entail. The following is a tabular representation of the
registration/application numbers –
The Taj Mahal Palace Hotel may be the first
building to be granted trademark protection in India, but several landmark
buildings around the world, principally in the United States of America have
already achieved this distinction. A few such examples are -
Under the American Lanham Act,
architectural works are also eligible for registration. Therefore, the USPTO’s
procedure provides for registration of an architectural structure as a
trademark if “the three-dimensional
configuration of a building is able to be registered only if it is used in such
a way that it is or could be perceived as a mark.”
In the evolution of the criteria
of “graphical representation” of trademarks, the next significant step is being
taken in the European Union, where the requirement of “graphical
representation” is being done away with altogether! The EU Trademark Reform Package,
which came into effect in March, 2016, now provides that national trademarks
and European Union trademarks (EUTMs) shall from now on consist in:
any signs, in particular
words, including personal names, or designs, letters, numerals, colours, the shape
of goods or of the packaging of goods, or sounds, provided that such signs are
capable of:
…
(b) being represented on the
register, in a manner which enables the competent authorities and the public to
determine the clear and precise subject matter of the protection afforded to
its proprietor.
The natural
implication of this is that it will now become much easier for brand owners to
apply not only for colors, three-dimensional shapes, sounds and scents as
trademarks, but it also opens up new avenues for the eventual registration of
marks in the form of holograms or even movement marks, such as in the form of
GIFs!
From a practical
point of view, though, there will remain uncertainties and technical obstacles
to the protection of unconventional trademarks. These obstacles are
inherent to the current filing system for trademark applications, the
examination process, and the need for a mark to be distinctive. Even though the
assessment of eligibility of non-traditional trademarks will indeed be a
challenge, it is exciting to ponder upon the new trademarks that are likely to
come into being as a result of these revolutionary changes.
So, what is the right all about?
Ever since the
registration certificate was issued on May 17, 2017, the story was widely
covered in mainstream media with suggestions being made by some media houses
that henceforth royalty will need to be paid for taking a photograph of the
building. Filtering out the obvious element of sensationalism in the news as
reported by the mainstream media, a closer look at the registration document
shows that the registration covers “services for providing food and drink;
temporary accommodation’. In effect, the building design/image cannot be used
in respect of services for which the registration is obtained without
authorization from the owner.
What happens if
a third party commercially exploits the image e.g., to make coasters, fridge
magnets or let us say postcards with image identical or similar to the
registered mark. Will the registration recently granted help? The answer is -
it will be persuasive, however, the owner of 'Taj Mahal Palace' hotel will need
to establish its reputation and goodwill, that is, rely upon its common law
rights that exist independent of registration to stop a third party from
copying its trade mark. As per the Indian trademark law, the current
registration only grants exclusive rights in relation to services for which
registration has been granted. Therefore, ideally Indian Hotels Company should
have also filed applications in Class 14, 16, 21, and 25,etc, to enlarge its
statutory right and prevent others from commercially using the said images in
printed matter, souvenirs or other products in that class. Thus, by necessary inference, tourists are
very safe to take photos with the ‘Taj Mahal Palace’ hotel in the background during
their next trip to Mumbai as long as the same are not for commercial use.
A case for panorama rights?
To move the
debate away from trademark law, it is pertinent to mention over here that the
European Union Copyright law has a provision, colloquially called ‘Freedom of
Panorama’, that permits taking photographs and video footage and creating other
images (such as paintings) of buildings and sometimes sculptures and other art
works which are permanently located in a public place, without infringing on
any copyright that may otherwise subsist in such works, and the publishing of
such images. It limits the right of the copyright owner to take action for
breach of copyright against the creators and distributors of such images. It is
an exception to the normal rule that the copyright owner has the exclusive
right to authorize the creation and distribution of derivative works. The
phrase is derived from the German term Panoramafreiheit
("panorama freedom").
Directive
2001/29/EC of the European Union provides for the possibility of member states
having a freedom of panorama clause in their copyright laws.
Panoramafreiheit is defined in Article
59 of the German Urheberrechtsgesetz, and in the United
Kingdom, Section 62 of the Copyright, Designs and Patents Act, 1988,
states that “a copyright in a building (sculptures, models for buildings and works
of artistic craftsmanship)
is not infringed by (a) making a photograph or film of it or by (b) making a
broadcast or a visual image of it.”
However, the law
in France is not as liberal as its counterparts in Germany and the UK. Article
L122-5 of the French Code of Intellectual Property only provides for a ‘limited’
freedom of panorama for works of architecture and sculpture. The code
authorizes “reproductions and
representations of works of architecture and sculpture, placed permanently in
public places (voie publique), and created by natural persons, with the
exception of any usage of a commercial character”.
The limits to freedom of panorama in France have a drastic effect on Wikipedia
articles about French architecture. Wikimedia Commons editors routinely delete
any images of recent French architecture. For example, on February 1, 2017, the
image of the new Philharmonie de Paris
concert hall by architect Jean Nouvel,
opened in 2015, was deleted as a violation of freedom of panorama. There is no
clear image of the Louis Vuitton
Foundation building, opened in Paris in 2016; only a poor quality image
where the building is unidentifiable, and another where it mostly hidden by
trees.
Moving westwards
from the continent, in Canada, Section 32.2 (1) of the Copyright Act states
that, “it is not an infringement of
copyright for any person to reproduce, in a painting, drawing, engraving,
photograph or cinematographic work, an architectural work, provided the copy is
not in the nature of an architectural drawing or plan, or a sculpture or work
of artistic craftsmanship or a cast or model of a sculpture or work of artistic
craftsmanship, that is permanently situated in a public place or building”.
Finally, in the
United States, the Copyright Act of 1976, states that, “the copyright in an architectural work that has been constructed does
not include the right to prevent the making, distributing, or public display of
pictures, paintings, photographs, or other pictorial representations of the
work, if the building in which the work is embodied is located in or ordinarily
visible from a public place.”
With regard to India, the
Copyright Act, 1957, also provides for exception to copyright infringement.
Though the phrase “Freedom of Panorama” is not expressly mentioned in the
statute itself, but a constructive interpretation of Section 52 (1) (s) and (t)
together gives Indian law the scope for Freedom of Panorama. While Section 52
(1) (s) provides for an exception in so far as making or publishing of a
painting, drawing, engraving or photograph of a work of architecture, Section
52 (1) (t) extends a similar right as against sculptures and works under
Section 2 (c) (iii) i.e. “any other work
of artistic craftsmanship”. This is where the panorama exception in India
can be appreciated. Whereas most of the above quoted European and American legislations
are subject to qualifications like non-commercial use, as it only allows for
freedom of panorama if the copyrighted work is put to use for non-commercial or
educational purposes, the Indian law is not subject to such qualifications.
