Section 159 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Section 159 repeals the Trade and Merchandise Marks Act, 1958 and then saves what had been done under it. Old notifications, registrations, certificates and applications that were in force at commencement continue as if made under the corresponding provisions of the 1999 Act; pending applications are dealt with under the new Act; pending suits may continue; continued use that was not infringement stays lawful; and old registrations expire on a seven-year basis, with a special rule for defensive marks. For an old mark that is still on the register, see our legal consultation service.
The 1958 Act is repealed. Things done under it (registrations, certificates, notices, decisions, applications and so on) continue as if done under the corresponding provisions of the 1999 Act. Pending applications come under the new Act. Pending court proceedings may continue as if the Act had not been passed. Continued use of an old registered mark that was not infringement is not an infringement. For old registrations, expiry is the date immediately after the seven-year period; defensive marks cease after five years of commencement or their registered period, whichever is earlier.
Sub-section (1): repeal
"The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby repealed."
The repeal is complete, but sub-sections (2) to (6) save and carry forward what was done under it. Section 159 does not itself give the commencement date of the 1999 Act; see section 1 and the commencement notification.
Sub-section (2): things done under the 1958 Act continue
"Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall, if in force at the commencement of this Act, continue to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act."
| Item under the 1958 Act | Effect |
|---|---|
| Registration or certificate | Continues in force as if under the 1999 Act |
| Notification, rule, order | Continues, if in force at commencement |
| Notice, decision, direction | Continues |
| Application, request, consent | Continues |
The condition is "if in force at the commencement of this Act". Matters that were no longer in force are not revived.
Sub-section (3): pending applications
"The provisions of this Act shall apply to any application for registration of a trade mark pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof."
So an application pending on that day, and any proceedings that follow and any registration granted on it, are governed by the new Act, not the old.
Sub-section (4): pending legal proceedings
"Subject to the provisions of Section 100 and notwithstanding anything contained in any other provision of this Act, any legal proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act had not been passed."
Note that section 100 of the 1999 Act stands omitted by the Tribunals Reforms Act, 2021 (clause (q) of section 21 of that Act omits sections 99 and 100). Section 159(4) itself is not listed as amended in that Act, so the words "Subject to the provisions of Section 100" still stand in sub-section (4). Before the Tribunals Reforms Act, 2021 section 100 provided for the transfer of pending High Court appeals against the Registrar's orders, and pending rectification cases, to the Appellate Board from a date the Central Government notified. With that section omitted, the reference in sub-section (4) has nothing left to point to, and the Act does not say how it is to be read now.
Sub-section (5): continued use is not infringement
"Notwithstanding anything contained in this Act, where a particular use of a registered trade mark is not an infringement of a trade mark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act."
The protection applies to use that was not an infringement of a mark registered before commencement; for that use, continued use is not an infringement under the 1999 Act. It does not say that all prior use is protected.
Example. Gupta Brothers use a mark "GUPTA CHAAI" in a way that was not an infringement of a rival's mark registered before commencement. After the 1999 Act begins, the same continued use does not become infringement merely because the new Act is wider. New or different use would be judged on its own.
Sub-section (6): expiry of old registrations
"Notwithstanding anything contained in sub-section (2), the date of expiration of registration of a trade mark registered before the commencement of this Act shall be the date immediately after the period of seven years for which it was registered or renewed."
The proviso on defensive trade marks
"Provided that the registration of a defensive trade mark referred to in Section 47 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall cease to have effect on the date immediately after the expiry of five years of such commencement or after the expiry of the period for which it was registered or renewed, whichever is earlier."
| Mark | When registration expires |
|---|---|
| Ordinary mark registered before commencement | The date immediately after the seven-year period for which it was registered or renewed |
| Defensive trade mark under section 47 of the 1958 Act | The date immediately after five years from commencement, or after the period for which it was registered or renewed, whichever is earlier |
The seven-year period is the old registration period; the later renewal rules for the 1999 Act are in section 25 and the Rules. See how to renew a trademark.
Practical points
- If you hold an old registration, check its expiry against sub-section (6), not against current-term rules.
- Defensive trade marks under the 1958 Act have a hard outer limit under the proviso.
- Pending applications at commencement were handled under the 1999 Act.
- For anything depending on the exact commencement date, take it from the official notification; it is not printed in the Act.
Need help with an old registration?
Marks registered before the 1999 Act may carry different expiry and use questions. Our legal consultation service can review an old registration, its renewal history and any continued-use issue.
Key takeaways
- The Trade and Merchandise Marks Act, 1958 is repealed.
- Registrations, certificates, notices, decisions and other things in force at commencement continue as if made under the corresponding provisions of the 1999 Act.
- Pending applications fall under the 1999 Act; pending court proceedings may continue as if the Act had not been passed.
- Continued use that was not infringement of a pre-commencement registration is not infringement under the new Act.
- Old registrations expire the day after the seven-year period; defensive marks end at five years from commencement or the registered period, whichever is earlier.
Read next
- Section 158: consequential amendments
- Section 157: power to make rules
- Introduction to the Trade Marks Act 1999: complete guide
- How to renew a trademark
Disclaimer: Based on the Trade Marks Act, 1999 as amended by the Tribunals Reforms Act, 2021 and the Jan Vishwas (Amendment of Provisions) Act, 2023, as consulted on 1 October 2026. Forms, fees and procedure are set by the Trade Marks Rules, 2017 as amended from time to time. This article is general information, not legal advice; check the official text before acting.