Recently the Bombay Stock Exchange and well-known comedian, Kunal Kamra, engaged in a battle on Twitter in connection with Mr. Kamra’s use of a photoshopped image of the iconic Bombay Stock Exchange (“BSE”) building in his tweets. BSE’s concern over the issue emanates from its trademark registration for the three-dimensional representation of the BSE building for stock exchange services in Class 36. Yes, the building is the subject of a 2017 registered trademark!
The criteria for a building to be registered for a trademark under Indian law are the same as any other trademark such as a word or logo. Therefore, the mark must be capable of being represented graphically and should be capable of identifying the source of the goods or services. The graphic representation is not difficult—buildings can be easily represented graphically through drawings or photographs. As for the source-identifying function, an applicant would need to demonstrate that, owing to its long-standing use and goodwill, the building is solely and exclusively associated with the applicant. For example, in the application to register the BSE building, the applicant cited the three-dimensional representation of the building and claimed use since 1979 to show that the building has come to be associated with and only the applicant.
The primary reason for registering a building as a trademark may be to restrict any kind of ‘copycat architecture’ and to prevent any kind of tarnishment or dilution through unauthorized use of images, etc. of the building. It is important to note that such a registration does not take away the rights of an ordinary citizen to take pictures or draw the registered building. However, registration would give the right to the trademark owner to prohibit use of images, pictures, miniatures, etc. of the registered building for commercial purposes. For instance, in the United States of America, the owners of the Empire State Building routinely license out rights to third-parties to make souvenirs.
In conclusion, it won’t be incorrect to quote the great Bob Dylan and say ‘The times they are a changin’. There has been a meteoric rise of unconventional trademarks in the past decade and the concept of trademarks for buildings is a testament to that. It is predicted that applications and registrations for unconventional trademarks such as those involving sound and smell will only increase from here on and what remains to be seen is how India acclimatizes itself to this fast changing and dynamic scenario.