Time upon time, the significance of the ® (registered symbol) and the ™ symbol have been reiterated in our posts in our blog. The basic picture being ™ can be used with a trademark by entities to showcase and declare that the said mark is being used by the Applicant as a trademark in respect of his/her goods/services and the ® symbol is used to denote registered marks.

The above appears quite comprehensive and easy, doesn’t it? But we have encountered a very singular instance involving the above basics and which in fact, questions this rudimentary premise further. I promise you an interesting read and in fact, would not be surprised if you have more to say.

One of our IR applications designating India was a mark filed with the ® symbol with the WIPO. To give you clarity, the basic registration (mark it, it is a registration and not an application), is from a country which allows marks with the ® symbol. So it was never a problem in the basic registration. Going even further to make the process smooth and avoid unnecessary hassle, the Applicant has also disclaimed the ® symbol in the IR application.

As you can imagine, when it came to the Indian TMO to examine, the “registered” ® symbol was objected, directing us to file a request with WIPO to remove the symbol. As we all know, being an IR application, the amendment has to be filed with WIPO. While we channelled our efforts towards the same, strange as it might be, amendment (or corrections) in trademark applications cannot be filed with WIPO through MM21 (the most relevant form in cases of revision, error correction) as any errors made by the holder or the holder’s representative shall not be corrected as per the rules provided for, under the said Form. So this virtually sealed the position. But undaunted as we were and given the uniqueness of the situation, WIPO was contacted to obtain more clarity and clarity we got.

WIPO categorically put forth that it does not have the power to amend since there is no provision to amend as per Madrid Protocol and the Common Regulations and thereby it is unable to remove the “®” symbol in any way whatsoever. It significantly, however, cited the disclaimer of the “®” symbol and that this was intimated to the Indian IP office; though it was also quick to advise to redirect our queries to the Indian IP Office only.

Hence as abundantly clear as it would be, we had to revert to the IP Office (through myriad means till the office of the Controller) for a solution (or so we thought). Now it is anybody’s guess what the Indian Trademark Office’s reaction would be. Well, nothing save to file a new application.

This was a predicament, accepted. Not a routine day-to-day affair, also accepted. But it is a matter which rightfully requires a solution. It is a matter where there ought not to be the question of passing the buck. The IR application has clearly passed all criteria and designations have been made. What’s more, the same mark has acquired registration in other jurisdictions. The disclaimer was intended to iron out such jurisdictional obstacles. Evidently WIPO cannot intervene.

So where does the solution lie? Should not a more holistic, inclusive, insightful and judicious (I would not run out of adjectives, trust me) approach be adopted? Looking the other way would obviously not solve any challenge but then, the question seemed to have been, “should the challenge be owned?”

To give some further perspective and food for thought, Section 107 of the Trademarks Act provides for penalties for falsely representing trademarks as registered from which the principle of using the ® symbol draws strength. While it predictably forbids the use of the word ‘registered’ or related symbols, there are certain exceptions to it which allow for use of the ® symbol where it is used in direct association with other words/expression or that symbol per se imports reference to the registration of the mark in other jurisdictions. There is no hard and fast rule attached to it. So it does make one wonder, is this not an IR application designating India. So is there not a reference here?

But let me even disregard this. Does the disclaimer bear no weight in the present case?

But what basically surprises most is the fact that there is has not been one rule for all either. The whole system appears to be ambiguous where certain marks even with the ® symbol get registered and many unfortunately do not. So what yardstick is used in each case is a mystery.

So what changes do you think should be made? Re-visiting the Madrid Protocol and the Common Regulations? Analysing our own Trademark law, probably for more clarity? Or perhaps time must be taken to analyse all facets of the matter and then pass a decision. The best possible and practical recourse which we perceive now is taking this to Court and find a definite and comprehensive decision. Let the buck stop somewhere!

Meanwhile, applicants filing an application with the IB, WIPO designating India should ensure that the ® (registered symbol) is not part of the trademark at the time of filing the international application.