section-58-of-trademark-act
section-58-of-trademark-act

Section 58 of Trademark Act: Everything About Correcting the Register

Section 58 of Trademark Act, 1999 helps trademark owners and users keep the Trademark Register accurate. It allows corrections of minor errors such as typos in names or addresses, updates due to changes like a company merger or removal of unused trademarks or specific goods. The Registrar of TradeMarks reviews these requests and makes sure that the register remains reliable and disputes are minimized. By maintaining accurate records, Section 58 of Trademark Act protects trademark rights and supports a strong intellectual property system in India, benefiting businesses and the public.

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What is the Trade Mark Register?

Before explaining Section 58, it is important to understand what register is. Section 6(1) of the TradeMark Act, 1999, mandates a register maintained at the Trade Marks Registry’s main office:

  • The Trademark Register is an official record of all registered trademarks in India, detailing the owner’s name, address, trademark description, the goods or services covered and any conditions, limitations, or transfers (e.g., assignment to another owner). 

  • It serves as legal proof of ownership and helps prevent trademark disputes by clearly documenting rights.

  • The register is a public record, accessible to anyone for verification or trademark searches (Section 6(2)). It can be maintained electronically, ensuring easier access and updates. 

  • The register also includes trademarks from the earlier Trade and Merchandise Marks Act, 1958 (Section 6(7)), preserving continuity. However, trusts cannot be listed as owners (Section 6(4)). The Registrar of TradeMarks ensures the register’s accuracy, as errors can lead to confusion, financial losses or legal issues. For instance, an incorrect owner’s name or goods classification could weaken a trademark’s protection. This is where Section 58 becomes crucial, allowing owners to correct mistakes promptly to maintain the register’s integrity and protect their rights.

Provisions of Section 58 of Trademark Act

Section 58, called “Correction of register,” gives the Registrar power to update the register when the trademark owner or user requests it. It has two parts, each covering different situations.

Subsection (1): Corrections by the Registered Proprietor

Under Section 58(1), the Registrar of Trademarks can make changes if the trademark owner applies in the correct way. These changes include:

  • Fixing mistakes in the owner’s name, address, or description, or other details about the trademark.

  • Updating changes in the owner’s name, address, or description.

  • Removing a trademark from the register completely.

  • Removing specific goods or types of goods or services from the registration.

  • Adding a note or disclaimer that doesn’t increase the trademark’s rights.

These changes fix small errors, like spelling mistakes, without changing the trademark’s main purpose. For example, if a company’s name changes after a merger, they can update it. They can also cancel a trademark if they no longer use it or remove certain goods to avoid challenges for non-use under Section 47. Importantly, changes under Section 58 must not expand the trademark’s original rights—any expansion needs a new application.

Subsection (2): Corrections for Registered Users

Section 58(2) lets registered users like those licensed to use the trademark, request similar changes. The Registrar must notify the trademark owner before making these changes, which can include fixing errors or updating the user’s name, address or description. This keeps licensing records accurate and protects everyone involved.

Section 58 focuses on simple, non-controversial changes and requires the Registrar to update the registration certificate if necessary.

Know about the Trademark Registration Cost in India.

Grounds for Correction under Section 58 of Trademark Act

Section 58 of Trademark Act allows changes only for specific reasons to avoid misuse. These reasons are:

  • Fixing small errors, like typos, that don’t change the trademark’s core identity or scope.

  • Updating details due to real changes, like a new address or company name.

  • Voluntarily removing a trademark or specific goods to simplify the registration.

For example, if a trademark lists an old address, the owner can fix it. However, changing the trademark itself, like modifying a logo, isn’t allowed under Section 58, that’s covered by Section 59. The goal is to keep the register accurate without causing disputes.

Procedure for Applying under Section 58 of Trademark Act

The process for using Section 58 is outlined in the Trade Marks Rules, 2017, mainly Rule 101. Applications are made on Form TM-P, with evidence like affidavits explaining why the change is needed.

Key Steps in the Procedure

The process given below is simple and usually doesn’t involve disputes. If someone objects, it might become more complex:

  • Filing the Application: The trademark owner or user submits Form TM-P to the Registrar, explaining the requested change. One form can cover multiple trademarks if there’s enough evidence.

  • Service and Notice: A copy of the application must be sent to other registered users or the owner, depending on who’s applying. For user requests, the owner gets a notice.

  • Registrar’s Review: The Registrar checks the application and evidence. If everything is in order, the change is made. Some address changes by public authorities have no fee (Rule 101(2)).

  • Updating the Certificate: The Registrar may ask for the original certificate to add a note or issue a new one.

  • Affidavit Requirement: Rule 101(6) requires an affidavit with the application, and copies must be shared with others involved.

Learn How to Check Trademark Availability.

Importance and Implications of Section 58 of Trademark Act

Section 58 of Trademark Act recognizes that businesses change and allows trademark owners to update their registrations without losing protection. Its benefits include:

  • Preventing Problems: Accurate records reduce the risk of challenges under Section 57 or removal for non-use.

  • Helping the Public: An up-to-date register makes it easier for others to check trademarks, reducing conflicts.

  • Protecting Value: Quick corrections protect a brand’s value and prevent legal issues from outdated details.

Section 58 helps owners cancel unused trademarks or add disclaimers to strengthen their position. While there aren’t many court cases specifically about Section 58, because it’s administrative, courts in related cases have stressed that corrections must not harm others’ rights or go beyond the original registration. The register’s accuracy is key in trademark disputes.

Summary

Section 58 of TradeMark Act, 1999, is an important provision for keeping the trademark register accurate. It lets trademark owners and users fix errors, update details or remove entries which makes the system flexible and user-friendly. Lawyers should encourage clients to use this section quickly to protect their trademarks. As trademarks remain important in a global economy, understanding and using Section 58 will continue to be essential for managing brands effectively. This simple safeguard supports the Act’s goals and strengthens India’s intellectual property system.

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Section 58 of Trademark Act: FAQs

Q1. What is Section 59 of the Trademark Act? 

Section 59 allows the Registrar to cancel or modify a trademark registration if the owner applies for it or if it’s legally required.

Q2. What is Section 57 of the Trademark Act? 

Section 57 permits the Registrar or court to cancel or amend a trademark registration if it was wrongly registered or unused for long.

Q3. What are the 4 types of trademarks? 

The four types are word marks (names/logos), device marks (symbols/designs), service marks (for services), and collective marks (for groups/organizations).

Q4. What is Section 56 of the Trademark Act? 

Section 56 allows the Central Government to issue orders to modify or correct the Trademark Register in specific cases.

Q5. What is Section 58 of Trademark Act? 

Section 58 allows trademark owners to request corrections to minor errors in the Trademark Register, like names or addresses.

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