'Image Trademark'- The Evolving Concept In IPR Jurisprudence

Introduction

First time in India the term "image mark" has been used when Indian Hotels Company Limited (IHCL) obtained the trademark for the Taj Mahal Palace Hotel and Tower Wing Exterior (image) on 19th June, 2016.[1] The registration number is 3386351 and falls under Class 43 that covers "services providing food and drink; temporary accommodation.[2]" The Indian Hotels Company Ltd (IHCL) was able to secure a trademark for the hotel's unique architectural design consisting of the red-tiled Florentine Gothic dome and the grand exterior. It has distinctive Indo-Saracenic arches and is known for defining the aspect of Mumbai City's skyline.[3]

Hence, by receiving the trademark protection, The Taj Mahal Palace Hotel is now enumerated in one of the only prestigious building structures which have received this kind of recognition so far including the Empire State Building in the New York, The Eiffel Tower in the Paris and The Sydney Opera House in the Australia.[4]

Image Mark

The word image mark relates to trade dress protection. Section 43(a) of the Lanham Act5 of USA defines trade dress as "almost anything at all that is capable of carrying meaning". The purpose of trademarks and trade dress is to prevent consumers from likelihood of confusion from buying one product under the belief that it is another. It establishes the link between the product and the source. For example, Apple Inc. recently secured the registration over the design of its flagship Apple Stores as trade dress.

Indication of Source

In the case of Rock & Roll Hall of Fame v. Gentile Productions (1986), the Rock and Roll Hall of Fame and Museum has registered trademarks in the name of The Rock and Roll Hall of Fame and its building design. A professional photographer, Charles Gentile, sold poster featuring a photograph of the Museum and underneath the photograph was written "ROCK N'.

ROLL HALL OF FAME". Also, His signature was beneath the photograph. The Museum accused him of trademark infringement, unfair competition, false or misleading representations and trademark dilution. They were able to prove the distinctiveness and reputation of their trademark. As a result, Gentile's poster would lead consumers to believe that they are produced or sponsored by the Museum. Hence, the US States court went on to hold that the Museum had shown a likelihood of success in proving its federal and state claims, and the court found out that the Museum's building design was a fanciful mark...