We’ve often explained the ® and ™ symbols. Here’s a real case that tested the basics — an international registration filed with ®, valid at home and even disclaimed, that hit an Indian objection nobody could fix. A cautionary tale, with a one-line prevention.
The basics — quickly
™ declares you’re using a mark as a trademark; ® denotes a registered mark. Simple — until it isn’t.
The trap
One of our international registrations (IR) designating India carried the ® symbol in the mark. Crucially:
- the basic registration was from a country that allows ® in marks, so it was never a problem at home; and
- to smooth things, the applicant even disclaimed the ® symbol in the IR application.
Yet when the Indian TMO examined it, it objected to the ®, directing us to have it removed via WIPO. But being an IR, any amendment must go through WIPO — and here the process sealed shut:
- amendments/corrections can’t be filed via Form MM21 where the error is the holder’s (or their representative’s) — those aren’t correctable under the rules; and
- WIPO categorically said it has no power to amend, since there’s no provision to do so under the Madrid Protocol and Common Regulations — it can’t remove the ® at all. It noted the disclaimer had been communicated to the Indian office, and pointed us back to the Indian office.
Back at the Indian office (all the way to the Controller), the only “solution” offered was: file a fresh application — nationally without the ®, or a new international application.
Why that answer isn’t good enough
The IR had passed all criteria, designations were made, and the same mark was registered in other jurisdictions. The disclaimer was meant precisely to iron out such jurisdictional wrinkles — and WIPO can’t intervene. So the problem needs a real solution, not buck-passing.
Consider Section 107 of the Trade Marks Act — penalties for falsely representing a mark as registered (the source of the ® rule). It forbids using “registered” or related symbols, but with exceptions: where ® is used in direct association with words importing reference to registration in another jurisdiction. An IR designating India arguably is such a reference — so does the disclaimer really carry no weight? And the system isn’t even consistent — some marks with ® get registered while others don’t, with no clear yardstick.
The practical view: this may need a court to give a definite, comprehensive answer.
The simple prevention
Until then, the fix is prevention: when filing an international application with the IB/WIPO designating India, ensure the ® symbol is not part of the mark at the time of filing.
The takeaways
- Never file an IR with ® in the mark if you’ll designate India — it can trigger an objection.
- WIPO can’t remove it — the Madrid Common Regulations provide no amendment for holder errors.
- A disclaimer may not save you — India objected despite the disclaimer.
- The only offered fix is a fresh filing — costly and avoidable by not including ® upfront.
Frequently asked questions
Can I include the ® symbol in an international trademark application designating India? Best not to — the Indian office may object to ® in the mark, and WIPO cannot amend the IR to remove it, leaving a fresh filing as the only fix.
Can WIPO remove the ® symbol from an IR? No — WIPO has stated it has no power to amend, as the Madrid Protocol and Common Regulations provide no correction for holder errors of this kind.
Does disclaiming the ® symbol solve the problem? Not reliably — in this case India objected despite the disclaimer having been communicated.
How do I avoid the ® trap? Ensure the ® symbol is not part of the mark when filing the international application with WIPO designating India.
Useful official resources
- WIPO — Madrid System
- The Trade Marks Act, 1999