An original design of a building embodied in any tangible medium of expression, including buildings, architectural plans, or drawings, is subject to Intellectual Property protection as an architectural work. Architectural works form a blend of art, ideas and techniques of designing and constructing buildings. Intellectual Property, in various forms, plays a pivotal role in the protection of architectural works to safeguard the economic and moral rights of the proprietor of such works. This Blog Post primarily focuses on Trademark Protection and the extent thereof, of which the proprietor and enforcers should be aware.
Evolution of Building Trademarks
The emergence of building trademarks can be dated back to the case ofWhite Tower Sys. v. White Castle Sys. of Eating Houses Corp.[90 F. 2d 67 (6th Cir. 1937)]. In this case, there was a fast-food restaurant named White Castle in Wichita, Kansas. In the year 1926, another party, after witnessing the achievement of White Castle, opened an alike fast food business called White Tower in Milwaukee, Wisconsin. Later on, both businesses expanded to the area of Detroit, Michigan. The dispute arose because both the buildings were white and were in the shape of miniature castles. They even had similar slogans as well as names. During the investigation, it was revealed that the owner of White Tower paid the employee of White Castle exorbitant costs o disclose secrets about the structure of White Castle and to click photographs of the structure. The Court observed that both the buildings are so alike that it could easily confuse people. It was a well-settled principle that the person having priority over a distinctive feature is entitled to get the exclusive right. Based on this principle, White Castle got the exclusive right over the building style.
Trade Dress Protection
The styles, structure and décor of buildings are covered under the term ‘trade dress’. It is well established that the interior/exterior décor, as well as the overall impression of any construction, may be protectable as a trade dress.
It is a type of trademark involving the entire picture and impression of the construction. It may also encompass various features such as size, shape, colour, colour combinations, texture, graphics, and overall appearance of the exterior. In the United States (US), trade dress infringement is covered underSection 43(a) of the Lanham Act, 1946. According to this provision, any person who indulges in the false representation of goods or services, or any packaging material or any device that deceives or misleads the consumers or portrays any kind of affiliation to the original brand, such offender is liable for a civil action. The trade dress protection can be extended even when the marks are not registered formally. The basic criterion for giving trade dress protection is that the design or feature should be non-functional and distinct.
Indian trademark law is based on theEnglish Trademarks Act, 1994, which has acquired trade dress provisions from the Lanham Act. The concept of trade dress protection has been reflected underSection 2(1)(zb) of the Trademarks Act, 1999.
Role of Trademarks
According toSection 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 Trademarks Act, 1999 do not cover the registration of the architectural designs as a trademark expressly, however, an inference can be drawn under Section 2(1)(zb). According to this Section, any mark which is being capable of graphically representing and emanates distinct qualities so that it can be easily distinguishable from the goods or services of another can be trademarked. Thus, the graphical representation and an indication of the source of a mark is the sine qua non for trademark protection of architectural works as well.
‘Graphical representation’ is defined as a way in which the trademark for goods or services can be exhibited or are capable of being exhibited in the paper form and this term also includes the digital representations after passing of theTrade Mark Rules, 2017. ‘Indication of the source’ means that the building should be associated with the trademark owner and the goods and/or services offered.
In the case ofGorbatschow Wodka K.G. v. John Distilleries Limited (2011 (4) BomCR 1), the plaintiffs had designed a unique bottle inspired by Russian architecture for selling vodka. The defendants copied the design of the bottle. The Hon’ble Bombay High Court held that since the bottles were distinct, they were entitled to the trademark. In addition, the Court passed an order of injunction to restrain the defendants from selling these bottles.
Significance of Trademarks
The essence of a trademark is to designate the origin of certain goods or services that enable the consumers to differentiate between two similar products that are procured from different places. Thus, it is the goodwill or reputation associated with the mark that allows identification of the source of goods. The purpose behind registering an architectural design as a trademark is to ensure that there are no exact replications of the structure. It protects the interest of consumers so that they are not misled or bamboozled because of such replicas in the market. It also helps preserve significant and iconic features of construction, provided the same should not form a part of the functional aspect of the construction.
Trademark Protection of Architectural Designs
Under the Trade Marks Act, 1999, trademark registration can be conferred over the building but for this, the building should be easily identifiable by the consumers as a source of the particular goods/services. In other words, the goods or services provided by the owners of that building must be easily distinguishable from the goods or services provided by another. The identity of a mark should exist solely with the owner of the trademark and others should be excluded to use it. Therefore, the identification of an originator or proprietor is essential.
Let’s discuss various pre-requisites for granting trademark protection to an architectural design of a building:
- 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.
- Graphical representation- Graphical representation plays an essential role when protecting the mark in trade. The graphical representation of the design or feature of the building should be possible, i.e. the mark should be capable of being portrayed or recorded on some material such as paper.
- Capable of distinguishing the goods and/or services: The identification of the building must be wholly and solely connected with the owner of the trademark and the goods and/or services provided by the trademark’s proprietor should be easily distinguishable with the goods and/or services provided any other business/person. It is, however, essential to associate the said logo of the architectural work with goods and/or services. Where the proprietor has no associated goods and/or services to offer concerning the construction of a building, mere creation of a creative or unique symbol, logo, or trade name will not act as a determinant to qualify for the registration of the trademark.
The protection granted under the Trade Marks Act, 1999 will continue till perpetuity as long as the mark registration is renewed every 10 years.
Advantages of trademark protection: Empire State Building v. NYC beer (TTAB June 17, 2016)
In the landmark case ofESRT Empire State Building LLC, the owner of rights in the Empire State Building mark and logo design succeeded in opposition to the registration of beer and other malt beverages. In the instant case, the opposition was challenged by the plaintiff- ESRT Empire State Building LLC, who are the owners of federal registrations for the word mark EMPIRE STATE BUILDING which was composed of the picture of the Empire State building and the mark was registered to be used by the owners as the service providers in the entertainment industry as well as real estate industry.
The ESRT Empire State Building LLC alleged that if the defendant beer company procured the trademark then it would lead to dilution of their exclusive trademark right, confusion may arise, and it may induce consumers to believe that there is a connection with the Empire state building. They put forward a claim of “Dilution by blurring” to register the NYC BEER logo design. The US Court of Appeals for the Federal Circuit held that as the trademark is well recognized and famous, all the elements for trademark dilution are proved for a successful claim of dilution by blurring and acceptance. As a result, the NYC Beer’s trademark’s application was not accepted. The primary reason for the court to rule in favour of the ESRT Empire State Building was that the building is visited by millions of tourists and visitors every year and is easily identifiable by the masses. Thus, the trademark registration levied an exclusive right with the Empire State Building and it was able to uphold its unique identity and to avert any misuse of it by third-party or any other companies.
Rights of the Proprietor
Trademark holders have the exclusive right to use a trademark with any goods and/or services that are explicitly stated in the application for the registration. Such use is extended to include the sale, license/assign or alter the mark, and the right to seek statutory remedy against infringing use. In such cases, an infringer of a valid trademark faces liability for damages obtained from the infringing activities.
Building Trademarks and Right to use its photograph
In India, any person can take photographs or create paintings of the trademarked building for non-commercial purposes, and such use will not amount to trademark infringement. In case such photographs are to be employed for commercial purposes, such users need to seek permission from the proprietors of the trademark. The proprietors are entitled to get a licensing fee.
Capitalizing on this protection, many owners of well-known buildings such as the Statue of Liberty in the US, the Eiffel Tower in France and the Taj Mahal Palace Hotel in India, have all obtained trademarks for the appearance of their buildings, claiming that the images of the marks serve as indicators of the source of services and goods. For example, the Taj Mahal Palace Hotel, owned by the India Hotels Company Limited (IHCL) and located in Mumbai, became the first building to secure a Trademark Registration in India in 2017 under trademark class 43 (services for providing food and drink). The building has earned a unique status over the period and now the city of Mumbai and Taj Mahal palace share an inseparable connection. In the year 2018, the Bombay Stock Exchange got its building trademarked under Trademark Class 36 (insurance; financial affairs; monetary affairs; real estate affairs). Thus, the building in the Indian regime can be conferred trademark protection depending on the function, purpose or use of the building provided it fulfils the requisites for the same.
The Beijing National Stadium, Burj Khalifa in Dubai, and Opera House in Sydney have also acquired trademarks for their unique architectural design. Furthermore, in 2013, Apple Inc. secured trademark registration for its stores’ architectural design and layout. Thus, not only the structural or exterior designs are covered under the ambit of the trademarks but any other possible designs fall under its purview.
The registration of the building as a trademark increases the commercial revenue while also protecting the distinctiveness of the work and results in creating a monopoly regarding the use of an image of the building in any form. It acts as the source identifier of those goods if the building owners have expanded the use of the marks onto such goods. 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.
Judicial Pronouncements on Trademarked Architectural Designs
In the Indian regime, there are no notable judicial pronouncements about trademarks in the construction industry as this concept is in the embryonic stage and still developing. Here are a few case laws from foreign courts that will help in understanding the concept better:
In the case ofTaco Cabana International, Inc. v. Two Pesos, Inc. (505 U.S. 763 (1992)), the Hon’ble Court held that the plaintiff’s arrangement of a festive-like restaurant with celebratory decorations and the iconic colour scheme constituted an enforceable trade dress since the same was inherently distinctive. Imitating a component of a trade dress may not constitute infringing use; however, where all the components of a trade dress are placed together, the same will attract the provisions of the law.
In the case ofDunkin’ 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.
In the case ofWeinstock, Lubin & Co. v. Marks (109 Cal. 529, 42 P. 142), the Hon’ble California court held that the arches and alcoves used by the retailer in his building could not be copied by the competitor in his store as the signs, structures, designs of the building act as the identification source for the buildings.
Which Intellectual Property Right is better in the case of buildings?
Apart from trademarks, other Indian legislations also entail provisions to extend protection to buildings and their architecture under their ambit. UnderSection 2(c)(ii) of the Copyright Act, 1957, the works of architecture are also included in the term ‘artistic works’, and as perSection 13 of this Act, artistic works are entitled to copyright protection.Section 2(d) of the Designs Act, 2000 enumerates the meaning of the design, and a building and its architecture can seamlessly fit within the definition.
The pertinent question that arises is: Which right should the person apply for while registering buildings for their unique features?
Copyright only gives protection to the aesthetic value of the buildings, and design registration helps to hike the commercial revenue of the property. However, trademarks not only act as a revenue generator considering the licensing fee using the image of the building for non-commercial use. They also help in showcasing the affiliation of the building to its owner as well as retaining its identity as a landmark. Another parameter to choose a trademark over design or copyright protection is that the term of protection is longer in the case of a trademark.
Certain architectural and creative features of a building can be used as trademarks. Today, the modern manifestation of art in the form of buildings, monuments and sculptures has enhanced the perception of creativity while not limiting them to their basic functional features of storing, sheltering, and protecting mankind. Intellectual Property becomes vital here, especially trademarks, as they can be used to the benefit of the proprietor to exclusively utilize the symbols, drawings, features, or components of the construction. Trademark law provides valuable protection for architects, owners, and developers in the marketplace by preventing the use of a mark associated with the proprietor, which would otherwise generate confusion amongst the masses as to the origin of the goods. However, before deciding on any structural designs, those in charge of architectural and design-related aspects of the building should ensure that no one else’s intellectual property rights are being violated through the building’s construction.
About the Authors
Ms. Soumya Khandelwal is an Associate at Inttl Advocare.
Pranjali Aggarwal is a 4th Year Law Student from University Institute of Legal Studies (UILS), Punjab University (PU), Chandigarh.
Managing Editor: Naman Anand
Editors-in-Chief: Jhalak Srivastav and Aakaansha Arya
Senior Editor: Hamna Viriyam
Associate Editor: Pranjali Aggarwal
Junior Editor: Tisa Padhy
Preferred Method of Citation
Soumya Khandelwal and Pranjali Aggarwal, “The Protection of Architectural Design of Buildings under Trademarks” (IJPIEL, 2 March 2022)