Understanding the Concept of Destination Branding through Trademark Protection

 The hospitality industry of India has undoubtedly become an exceedingly crucial service provider across the nation. Due to the increase in tourism, the role of restaurants and hotels has also increased. By establishing a brand name, a service provider in the hospitality industry can benefit from having many customers and build a good reputation. However, there is a risk involved in this scenario – with the brand names of hotels and restaurants becoming popular, other service providers in the industry might misuse this popularity to gain an unfair advantage. Therefore, to protect your business in the hospitality industry, you must seek protection via Intellectual Property Rights (IPRs), specifically by registering your hotel or restaurant brand name and logo as trademarks. Here in this article, we shall shed light on the relationship between Trademark Law and the hospitality sector in India.

Relationship between Trademark Law & the Hospitality Industry

A trademark refers to any mark capable of being represented graphically, identifying the products or services of one and distinguishing them from those of others in the market. Hotels and restaurants must get their brand names and logos registered as trademarks for the ease of operating a business in India. Brands and businesses need to identify the Class under which their products or services fall. The same is done through the Nice Classification of Goods and Services, which, in 2010, added Class 43 for restaurants and hotels. Kindly note that a few services can’t be registered for in Class 43, including arranging travel by tourist agencies, rental services for real estate, preservation services for food and drinks, discotheque services, rest and convalescent homes, and boarding services.

If hotels and restaurants wish to have a more extensive and holistic Trademark Protection in place, they can register their proposed trademarks under other trademark Classes. Doing the same shall help them secure the varied services provided by them. Such trademark Classes include:

• Class 3 – Dealing with cosmetics, essential oils, perfumes, etc.
• Class 16 – Dealing with stationery material, such as office requisites, letterheads, printed matter, etc.
• Class 25 – Dealing with headgear, footwear, and clothing.
• Class 35 – Dealing with office functions, advertising, business administration, and business management.

Trademark for the Taj Mahal Palace Hotel

The Indian Hotels Company Limited filed a Trademark Application for the Taj Mahal Palace Hotel in Mumbai and obtained its registration. It was the first ever hotel to get a trademark registered for its building. The trademark is registered in Class 43 for the image and the Tower Wing Exterior of the Taj Mahal Palace Hotel. Internationally as well, similar trademarks have been filed and registered, such as the Sydney Opera House in Australia, Eiffel Tower in Paris, and Empire State Building in New York.

With the Trademark Registration of the Taj Mahal Palace Hotel’s building, the Indian Hotels Company can undoubtedly ensure protection from:

• Entities that may use the image of the Taj Mahal Palace Hotel for commercial purposes without having adequate authorization
• Entities that may sell products with the image of the Taj Mahal Palace Hotel, which leads to Trademark Infringement

Obtaining trademark protection for the Taj Mahal Palace Hotel is essentially stronger than copyright or industrial design protection since they deal with the commercial and aesthetic value of the property, respectively. Registering the architecture of a hotel as a trademark leads to a landmark, which acts as a source indicator and generates more revenue. Furthermore, in Rock and Roll Hall of Fame and Museum v. Gentile Production, it has been ruled out that for a building to obtain trademark registration, it must create a distinct commercial impression performing the trademark function of identifying the source to the customers.

Understanding the Concept of Destination Branding through Trademark Protection

The hospitality industry has grown immensely with destination branding, thereby finding its significance in tourism. Destination branding refers to the concept of promoting one specific location or place using a tagline or logo. The same is then safeguarded under trademark law.

It acts as an incentive for the consumers or for them to visit the place and enjoy the experience assured by the promoter. The concept as a whole came to the picture in different states and cities of India and worldwide to promote tourism.

For instance, the ‘Incredible India’ campaign was introduced in 2002 in India to promote and advertise the nation’s rich heritage and culture.  The corresponding logo and wordmark got registered as a trademark (to avoid any misuse or misappropriation) in 2007 under Class 39, which deals with packaging, storage of goods, transport, and travel arrangements.

Kindly note that destination branding fails if there is political instability in a region or incompetent implementation of measures for enhancing tourism.

Trademark Protection for Big Hotel Chains and Restaurants 

In India, big hotel chains and restaurants, like Shangri-La, JW Marriott, Radisson, Hyatt, Oberoi, etc., have realized the importance of safeguarding their products and services through Trademark Rights and registered them under various Classes. It may include boarding facilities, accommodation services, clothing items, shampoos, soaps, cosmetics, stationery items, advertising, etc.

Let us take the example of Radisson Hotels International Inc. It has registered several trademarks, including RADISSON BLU, RADISSON RED, RADISSON INDIVIDUALS, and RADISSON MEETINGS, under Class 43. For accommodation services, reservation services, and award programs for customers, the hotel has registered two trademarks, namely RADISSON and RADISSON GOLD AWARDS, under Class 16. Clothing items, such as jackets, shirts, hats, bathrobes, etc., produced under the name of Radisson, have also been trademarked under Class 25. The hotel’s cosmetics, soaps, and shampoos have been registered in Class 3.

Therefore, hotels and restaurants in India should aim for all-inclusive trademark protection. They must look forward to protecting their distinctiveness, brand name, and reputation from the usage of any fraudulent marks.

India - Trademark Protection for the Hospitality Industry

The hospitality industry of India has undoubtedly become an exceedingly crucial service provider across the nation. Due to the increase in tourism, the role of restaurants and hotels has also increased. By establishing a brand name, a service provider in the hospitality industry can benefit from having many customers and build a good reputation. However, there is a risk involved in this scenario – with the brand names of hotels and restaurants becoming popular, other service providers in the industry might misuse this popularity to gain an unfair advantage. Therefore, to protect your business in the hospitality industry, you must seek protection via Intellectual Property Rights (IPRs), specifically by registering your hotel or restaurant brand name and logo as trademarks. Here in this article, we shall shed light on the relationship between Trademark Law and the hospitality sector in India.

Relationship between Trademark Law & the Hospitality Industry

A trademark refers to any mark capable of being represented graphically, identifying the products or services of one and distinguishing them from those of others in the market. Hotels and restaurants must get their brand names and logos registered as trademarks for the ease of operating a business in India. Brands and businesses need to identify the Class under which their products or services fall. The same is done through the Nice Classification of Goods and Services, which, in 2010, added Class 43 for restaurants and hotels. Kindly note that a few services can’t be registered for in Class 43, including arranging travel by tourist agencies, rental services for real estate, preservation services for food and drinks, discotheque services, rest and convalescent homes, and boarding services.

If hotels and restaurants wish to have a more extensive and holistic Trademark Protection in place, they can register their proposed trademarks under other trademark Classes. Doing the same shall help them secure the varied services provided by them. Such trademark Classes include:

• Class 3 – Dealing with cosmetics, essential oils, perfumes, etc.
• Class 16 – Dealing with stationery material, such as office requisites, letterheads, printed matter, etc.
• Class 25 – Dealing with headgear, footwear, and clothing.
• Class 35 – Dealing with office functions, advertising, business administration, and business management.

Trademark for the Taj Mahal Palace Hotel

The Indian Hotels Company Limited filed a Trademark Application for the Taj Mahal Palace Hotel in Mumbai and obtained its registration. It was the first ever hotel to get a trademark registered for its building. The trademark is registered in Class 43 for the image and the Tower Wing Exterior of the Taj Mahal Palace Hotel. Internationally as well, similar trademarks have been filed and registered, such as the Sydney Opera House in Australia, Eiffel Tower in Paris, and Empire State Building in New York.

With the Trademark Registration of the Taj Mahal Palace Hotel’s building, the Indian Hotels Company can undoubtedly ensure protection from:

• Entities that may use the image of the Taj Mahal Palace Hotel for commercial purposes without having adequate authorization
• Entities that may sell products with the image of the Taj Mahal Palace Hotel, which leads to Trademark Infringement

Obtaining trademark protection for the Taj Mahal Palace Hotel is essentially stronger than copyright or industrial design protection since they deal with the commercial and aesthetic value of the property, respectively. Registering the architecture of a hotel as a trademark leads to a landmark, which acts as a source indicator and generates more revenue. Furthermore, in Rock and Roll Hall of Fame and Museum v. Gentile Production, it has been ruled out that for a building to obtain trademark registration, it must create a distinct commercial impression performing the trademark function of identifying the source to the customers.

Understanding the Concept of Destination Branding through Trademark Protection

The hospitality industry has grown immensely with destination branding, thereby finding its significance in tourism. Destination branding refers to the concept of promoting one specific location or place using a tagline or logo. The same is then safeguarded under trademark law.

It acts as an incentive for the consumers or for them to visit the place and enjoy the experience assured by the promoter. The concept as a whole came to the picture in different states and cities of India and worldwide to promote tourism.

For instance, the ‘Incredible India’ campaign was introduced in 2002 in India to promote and advertise the nation’s rich heritage and culture.  The corresponding logo and wordmark got registered as a trademark (to avoid any misuse or misappropriation) in 2007 under Class 39, which deals with packaging, storage of goods, transport, and travel arrangements.

Kindly note that destination branding fails if there is political instability in a region or incompetent implementation of measures for enhancing tourism.

Trademark Protection for Big Hotel Chains and Restaurants 

In India, big hotel chains and restaurants, like Shangri-La, JW Marriott, Radisson, Hyatt, Oberoi, etc., have realized the importance of safeguarding their products and services through Trademark Rights and registered them under various Classes. It may include boarding facilities, accommodation services, clothing items, shampoos, soaps, cosmetics, stationery items, advertising, etc.

Let us take the example of Radisson Hotels International Inc. It has registered several trademarks, including RADISSON BLU, RADISSON RED, RADISSON INDIVIDUALS, and RADISSON MEETINGS, under Class 43. For accommodation services, reservation services, and award programs for customers, the hotel has registered two trademarks, namely RADISSON and RADISSON GOLD AWARDS, under Class 16. Clothing items, such as jackets, shirts, hats, bathrobes, etc., produced under the name of Radisson, have also been trademarked under Class 25. The hotel’s cosmetics, soaps, and shampoos have been registered in Class 3.

Therefore, hotels and restaurants in India should aim for all-inclusive trademark protection. They must look forward to protecting their distinctiveness, brand name, and reputation from the usage of any fraudulent marks.

Importance of Trademark Registration in India

In the present highly competitive economy, it is imperative for business firms, organizations, conglomerates, and startups to know and understand the importance of Trademark Registration for flourishing their businesses. A trademark is an exclusive form of Intellectual Property (IP) that makes a distinction between the products or services of a specific manufacturer, business owner, or trade person from those of the others. The primary goal of a trademark is to safeguard the interests of not only the owners or traders but also the consumers. A trademark helps in marketing and promoting the products and services and provides information about their quality. It also enables an enterprise or organization to acquire the Trademark Rights to utilize, sell, or distribute a registered mark. With trademark registration, you can enjoy all such benefits and make your potential customers identify your brand with the Registered Trademark of its name or logo.

In India, The Trademark Act of 1999 presents a legal basis for governing and dealing with the mechanism of trademark registration and Trademark Protection. Trademark registration is classified into several different categories based on the nature of the business and activities they manage or operate. There are 45 different classes corresponding to various types of products and services. The process of trademark registration is governed by the Controller General of Patents, Designs, and Trademarks along with the Ministry of Commerce and Industry and the Government of India. They keep track of every registered trademark and maintain a registry for every type of product and service. The trademark registration term is ten years in India, which is renewable every ten years.

Significant Aspects of Trademark Registration in India

1. With trademark registration, a label, brand, or business can manage to gain an extreme amount of exclusivity. Also, the customers and target audience shall uniquely identify your products and services and differentiate them from those offered by your competitors in the market.
2. When a trademark exists for a brand or business, the value of its products and services - increases exceptionally and automatically. Additionally, it becomes comparatively easier to advertise, promote, or market a brand with its corresponding registered trademark. Last but not least, as the most profitable aspect, a trademark holds immense potential for enhancing the product's overall market value.
3. For having a competitive edge and advantage over your potential rivals, it is essential to go ahead with getting your trademark registered. As a crucial business element, a trademark adds to the value of the brand and increases brand awareness.
4. It is integral for a company or organization to protect the brand's entity or name by getting the trademark registered and displaying ownership of trademark rights. With trademark registration, the owner shall own the exclusive rights to utilize, sell, distribute, license, or alter that product in any manner.
5. On being successfully registered, trademark protection can last up to a lifetime, with the renewal term being once in every ten years.
6. When it comes to communication, a trademark is indeed the best tool as it gives unique and relevant information about a company's products and services, and portrays a positive reputation.
7. A registered trademark offers ease to online users by helping them in distinguishing between a large number of products and services and finding the most relevant one for themselves. Many search engines, like Google, and social media platforms like Facebook and Instagram, are capable of identifying the trademarked products quickly within a few clicks. Consequently, there is a higher degree of brand reputation for a business on the Internet as well.
8. The owner of the registered trademark is entitled to initiate legal proceedings, file a lawsuit against the violators, and even demand monetary damages or compensation if under any circumstances his trademark rights are infringed.

 Ref- https://www.kashishworld.com/blog/importance-of-trademark-registration-in-india/

Adidas Wins Japanese Trademark Dispute over 'adidog'

The German sportswear giant, Adidas, has always maintained its reputation of being particularly litigious when it comes to protecting its well-known three-stripe trademark and shall never welcome brands with similar names as well. Adidas doesn't sell items for pets with its name on them and doesn't want any other brand to do so either. Earlier this year, Adidas had initiated a trademark dispute before the Japan Patent Office (JPO) by asking the national Intellectual Property (IP) body to reject and cancel the pending Trademark Application filed for use on clothing for dogs for the word 'adidog.' In its filing for Trademark Opposition in January, Adidas referred to Article 4(1)(xv) of the Japan Trademark Law, which prohibits Trademark Registration of a mark that is likely to create confusion in the minds of the customers as to the source of items bearing the mark. Adidas claimed that the high degree of similarity between the 'adidog' mark and its widely known trademark-protected name would make the customers believe that it has endorsed the use of 'adidog,' which isn't the case at all. It also asserted that such kind of customer confusion would be supported due to an immense level of consumer awareness corresponding to Adidas brand name across the globe and the exclusive use of its trademark-protected name in Japan for near about 50 years as of now. Furthermore, Adidas also pointed out the proximity of goods in question and their close relatedness.

The JPO's Opposition Board agreed with Adidas and dismissed the 'adidog' trademark application by saying that Adidas indeed has a remarkable degree of reputation in Japan since 1971, and the 'adidog' mark is similar to 'Adidas' in both the aspects of sound and appearance. It further stated that the products using the 'adidog' mark are not marked differently from the products sold by Adidas. At last, the Opposition Board said as nowadays the distributors of sportswear, shoes, and other related accessories are also dealing with clothing for pets, both types of goods can be closely related.

Adidas' trademark win comes after it initiated a separate legal proceeding against adidog last year when a Japanese company was looking forward to registering a trademark consisting of three diagonal parallel dog bones. Adidas had prevailed in that matter similarly, and on the same grounds as well, including its widely-recognized three-stripe trademark, visual resemblance, well-maintained and famous trademarks in Japan, and modern sportswear, shoes, and accessories distributors dealing in pet clothing and accessories.

Ref- https://www.kashishworld.com/blog/adidas-wins-japanese-trademark-dispute-over-adidog/

Malaysian Entrepreneurs Will Soon Have Access To Worldwide Trademark Protection

As per the newly-amended Trade Marks Act 2019, Malaysian entrepreneurs who file their trademarks under the Intellectual Property Corporation of Malaysia (MyIPO) will soon have access to worldwide Trademark Protection. Datuk Seri Saifuddin Nasution Ismail, the Minister of Domestic Trade and Consumer Affairs, announced the news on 23rd October 2019 by stating that this step aims at safeguarding the local entrepreneurs' brands and companies from being imitated worldwide. He mentioned that Malaysia has indeed seen cases, where well-established local products were imitated since they weren't trademarked by the trademark holder, and implementing this Act will prevent the occurrence of similar cases. He further said that the new Trade Marks Act 2019 shall allow entrepreneurs to trademark both non-traditional and traditional marks.

The previous Trade Marks Act of 1976 allowed entrepreneurs to trademark only traditional marks, including brands, names, labels, tickets, words, sentences, logos, signatures, or a combination of these. However, under the new Act, entrepreneurs can now file a Trademark Application for a range of other different marks like motion marks, sounds, holograms, patterns, positions, smells, shapes of products, etc.

The new Act also follows the recently-adopted Madrid System Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), adopted in Madrid on 27th June 1989. The Madrid System has Malaysia as its 106th member. Other ASEAN countries acceding to the protocol include Indonesia, Singapore, Vietnam, Thailand, the Philippines, Cambodia, Laos, and Brunei. The Madrid System allows these countries to safeguard their brand in 122 countries, including Australia, the United Kingdom, Brazil, and the United States of America. Trademark owners in Malaysia would need to file only a single trademark application with MyIPO to register or file their local brands in the countries, which are a part of the Madrid System.

The Madrid System is an international treaty which is administered by the International Bureau of WIPO (World Intellectual Property Office). It allows the owners to seek trademark protection in several countries simultaneously by filing a single trademark application with a single office, that too in just one language, and by paying the fee only once.

Malaysian entrepreneurs can register their brands as trademarks under the new Trade Marks Act 2019, starting from 27th December 2019. MyIPO expects to have somewhere around 4000 new Trademark Registrations coming in the month of December. Saifuddin has also urged the entrepreneurs to register their brands or companies under the new Act as it will benefit them in many aspects, including customer loyalty and brand sustainability. Furthermore, the Customs Department will also be given the due authority to block the entry of counterfeit goods and products under the names of local entrepreneurs and notify the concerned authorities of the matter.

The new Trade Marks Act 2019 has also laid down more severe punishments for the offenders and the ones getting involved in Intellectual Property Infringement. People getting involved in Trademark Infringement can be fined up to RM1 million, jailed for a maximum of five years, or probably both.

Ref- https://www.kashishworld.com/blog/malaysian-entrepreneurs-will-soon-have-access-to-worldwide-trademark-protection/

Kanye West's Trademark Application for 'Sunday Service' Denied

The US Patent and Trademark Office (USPTO) has recently denied Kanye West's Trademark Application for the phrase 'Sunday Service' for merchandise because someone else already got the phrase registered five years ago.  Kanye West's attempt to trademark the phrase made headlines this year in July. The phrase 'Sunday Service' is also the name of the gospel-inspired live performance series, which he brought to Coachella in April 2019. The rapper had filed the trademark application to use the phrase on apparel, including jackets, socks, footwear, shirts, dresses, hats, etc.

According to various reports, West has failed to trademark the phrase 'Sunday Service' as a person named Jeff Jonas, also widely known as DJ Escape, got the same phrase trademarked in 2014. Jeff had applied for Trademark Registration of 'Sunday Service' as it corresponds to conducting, organizing, arranging, and hosting events related to social entertainment, entertainment like live music at clubs or concerts, musical and artistic performances, organizing exhibitions for entertainment purposes, music tours, disc jockey performances, and dance parties and night clubs. As per Jeff's Facebook page, he runs a New York-based event series known as 'Sunday Service.'

The USPTO declined the trademark application by stating that the phrase would result in the likelihood of confusion as West's filing to trademark the same was also related to music. However, Kanye West can still submit more arguments and evidence within six months of the trademark application's denial to support his filing. In case he doesn't come forward to take any action, his trademark application shall be abandoned.

Till quite some time, West's Sunday Service events were not open to the general public and were attended by only his friends and celebrities, including Brad Pitt, DMX, Dave Chappelle, amongst many others. In the past month itself, West made his Sunday Service event a pop-up event open to fans in various cities, in a campaign to publicize and promote his brand new album titled 'Jesus is King.'

Ref- https://www.kashishworld.com/blog/kanye-wests-trademark-application-for-sunday-service-denied/

Trademarks in the World of Advertising

Whether you are planning to launch a marketing campaign or come up with new advertising, you are potentially opening yourself to trademark liability. In the present fast-paced economy and highly-competitive business world, business firms and companies are highly proactive of their unique creations and Intellectual Property (IP) and never hesitate to initiate legal proceedings against anyone who uses their registered words, symbols, logos, or slogans and infringes on their Registered Trademarks.

Nowadays, the stakes of spending an enormous amount of money on an advertising campaign and then receiving a 'cease and desist' order within a few days of launching it are way too high. Therefore, it has become essential to reduce the chances of receiving one of those dreaded legal letters and increasing your brand awareness by significantly analyzing and clearing your potential trademarks.

Without any doubt, there shall always be some risk involved in launching new advertising and marketing campaigns. Whether it relates to a wide-scale printing advertising campaign or a small-scale social media campaign, business companies and owners keep on monitoring each other for potential Trademark Infringement. The issue here is, even if your company or business isn't violating or infringing on some other company's Trademark Rights, just the mere expense of fighting a lawsuit can be more significant than the costs of scrapping the marketing or advertising campaign and starting fresh.
So let's make ourselves familiar with a few practices that companies can use to avoid the pitfalls in which they may fall while coming up with a brand new advertising campaign.

1- Make Sure to Analyze and Examine your Trademarks by Performing a Clearance Search

When you decide to launch a new marketing campaign, you must begin by analyzing what distinctive elements of your campaign potentially implicate the Trademark Law. Many people across the globe aren't aware of the fact that along with words and logos, even the sounds, colors, and movements can be registered as trademarks and obtain Trademark Protection if they are capable of uniquely identifying a single company or source. Besides, it is imperative to know that descriptive and generic phrases or words are least likely to obtain trademark protection, until and unless a company has spent a massive amount of time and money in associating all customer recognition to that one brand. For instance, the phrase 'American Airlines' is descriptive; however, there is only one American Airlines®. On the other hand, phrases or words that may require an additional step to connect with the products or services can be registered as trademarks, such as Mr. Clean, for cleaning solutions. After identifying the potential trademarks, you must look forward to performing a comprehensive Trademark Search to come across any company already using something identical for related products or services.

2- Always Review your Use of Someone Else's Intellectual Property

Comparative advertising is indeed a powerful and efficient tool for making your brand, product, or service stand out. There is an entire law surrounding the issue of fake advertising; however, under trademark law, it is necessary to be aware of the fact that you have certain strict limits concerning the use of someone else's trademark in your advertising campaign. The crucial factor here is whether your use of the trademark is likely to create confusion in the minds of the customers or not.  Additionally, you should also be very careful while using another person's images, artistic works, or drawings without their legal permission as such works are protected under Copyright Law.

3- Don't Forget to Monitor the Marketplace

Monitoring the marketplace yourself to ensure that nobody is improperly using your trademarks is of utmost importance. If another company's or individual's trademark is similar to your registered trademark, then your brand and business can suffer through irreparable harm and lose its strength. For instance, the same name for two different products, like 'Dove' chocolate and 'Dove' soap shall significantly reduce the distinctiveness for both the brands.
Ref- https://www.kashishworld.com/blog/trademarks-in-the-world-of-advertising/