Procedural timelines in trademark proceedings serve an important purpose by ensuring that opposition and rectification proceedings move in an orderly manner and parties do not delay resolution by suppressing pleadings or evidence. However, where rights under the Trade Marks Act, 1999 are involved, the related rules must be read in a manner that supports fair decision-making.
In Black Diamond Motors Pvt. Ltd. vs Registrar of Trade Marks & Anr. [Commercial Miscellaneous Petition No. 23 of 2026], the Bombay High Court was tasked to examine Rule 45 of the Trade Marks Rules, 2017, and whether the 2-month deadline prescribed for filing evidence by way of affidavit is mandatory.
Background of the Dispute
The proceedings arose from a dispute between two entities using the name “Black Diamond”. The petitioner was the registered proprietor of the mark “Black Diamond Motors Pvt. Ltd.” in Class 12 for their business in tippers, tip-trailers, flatbed trailers, ash-handling bulkers and tailor-made carriers. A rectification application was filed by Black Diamond Track Parts Pvt. Ltd. in August 2019, under Section 57 of the Trade Marks Act, seeking rectification of the registered trademark. Importantly, the 2-month period for filing evidence under Rule 45 expired on January 14, 2020.
The rectification applicant submitted certain documents as evidence in December 2020 but did not file an affidavit explaining them. In March 2024, an interlocutory application was filed with an evidence affidavit, seeking an extension of time. The Registrar allowed the application by order dated August 26, 2025 and took the evidence affidavit on record. The petitioner challenged this order before the Bombay High Court under Section 91 of the Trade Marks Act. It was argued that Rule 45 prescribed a mandatory deadline and that the Registrar had no jurisdiction to allow evidence after such delay.
Issue Before the Court
The key issue before the Court was whether the time limit under Rule 45 of the Trade Marks Rules, 2017 is mandatory or directory. The answer to this issue also required the Court to consider the scope of Section 131 of the Trade Marks Act, which empowers the Registrar to extend time for doing any act, except where the time is expressly provided in the Act. The Court also examined whether an application for extension must be filed before the expiry of the original period. Another issue was whether the 1-month limit under Rule 109 restricts the Registrar’s power in such cases and whether an appeal may be filed against the order granting extension under Section 131.
Opposition and Rectification Proceedings
The Court first laid down the difference between the types of proceedings under the Trade Marks Act. Opposition proceedings under Section 21 arise before registration, when a third party objects to the grant of registration. On the other hand, rectification proceedings under Section 57 can be filed after registration, when a person seeks cancellation or variation of a registered mark.
Rule 45 requires the opponent to file evidence by affidavit within 2 months from service of the counterstatement or intimate that it does not wish to file evidence and will rely on the facts stated in the notice of opposition. Further, if the opponent takes no action within the specified time, they would be deemed to have abandoned the opposition.
The Court held that Rule 45 must be read along with Rules 46, 47 and 48. Rule 46 allows the applicant to file evidence in support of the application; Rule 47 permits evidence in reply; and Rule 48 empowers the Registrar to permit either side to file further evidence on terms as to costs or otherwise as they think fit.
Nature of Rule 45
The Court held that Rule 45 is part of a procedural framework meant to regulate the orderly filing of evidence. It is not a limitation provision that ends the right to file evidence forever. If Rule 45 were considered to be mandatory, the scheme of Rules 46 to 48 would be affected. The Court opined that Rule 48 gives the Registrar discretion to allow further evidence. If Rule 45 were mandatory, it would be unreasonable to permit further evidence under Rule 48 after holding that failure to comply with Rule 45 permanently bars evidence. Therefore, Rule 48 supports the conclusion that the Rule 45 timeline is directory.
The Court also noted that the power to impose costs under Rule 48 shows that the consequence of delay is remedial, not penal. If a party causes inconvenience or delay, the Registrar may impose costs while permitting evidence. This is different from treating delay as fatal to the proceedings.
Deemed Abandonment
The Court also considered the effect of the “deemed abandonment” language in Rules 45 and 46. It was held that a deeming fiction must be confined to the purpose for which it is created. Rules 45 and 46 prescribe procedural deadlines for filing evidence affidavits or intimating reliance on pleadings. Therefore, failure to comply can only mean that the evidence deadline has been missed. It cannot automatically wipe out the underlying opposition or rectification proceedings.
The Court found that treating deemed abandonment as automatic termination of the proceedings would lead to irrational outcomes. In rectification proceedings, this would allow a registered trademark holder to retain statutory protection merely because evidence was delayed, even where the rectification applicant has already filed their opposition case. The Court held that the law should aid justice rather than defeat the rights created under Sections 21 and 57 of the Trade Marks Act.
Section 131 and Rule 109
The petitioner contended that timelines prescribed under the Rules should be treated as timelines under the Act and therefore outside the Registrar’s power. The Court rejected this argument, opining that Section 131 excludes only timelines set forth in the Act itself. A timeline prescribed in subordinate legislation may have legal implications, but that does not make it a time “expressly provided” in the Act. The Court noted that where it was intended to refer to both the Act and the Rules, the phrase “under this Act or the rules made thereunder” was used. Since Section 131 uses only the words “expressly provided in this Act”, the exclusion could not be expanded to cover every timeline under the Rules.
The Court further held that an application for extension under Section 131 does not need to be filed before the expiry of the original deadline. The provision permits extension whether the time has expired or not. Therefore, the Court refused to interpret a limitation period into the provision that the legislature had not provided.
On Rule 109, the Court held that the 1-month cap applies to the additional time granted by the Registrar when allowing an extension application. It does not mean that the Registrar loses jurisdiction merely because the application is made long after the original deadline. In the present case, the evidence affidavit was filed along with the interlocutory application. Once the application was allowed, the evidence came on record immediately, and no further time beyond one month was required.
The petitioner relied on the different case laws, including Sun Pharma Laboratories Ltd. vs Dabur India Ltd. [2024 SCC OnLine Del 813] and Mahesh Gupta vs Registrar of Trademarks [2024 SCC OnLine Del 1750], where Rule 45 was treated as mandatory. The Bombay High Court disagreed with that approach and stated these decisions did not adequately consider the effect of Rule 48 and the broader scheme of the 2017 Rules.
The Court also noted that opposition and rectification proceedings are different. Opposition proceedings begin before the statutory rights are granted to an applicant, i.e., before the registration of a trademark. On the other hand, rectification proceedings involve a registered proprietor who already enjoys statutory rights. Therefore, the same procedural timeline cannot be implied without considering this difference.
The Court found the reasoning of the IPAB in Sahil Kohli vs Registrar of Trade Mark [2018 SCC OnLine IPAB 55] more persuasive and held that procedural rules in subordinate legislation must serve the delivery of justice under the parent statute. They cannot operate as a rigid barrier that limits substantive rights.
Appeal Against the Registrar’s Order
The Court also considered whether an appeal could be filed against the Registrar’s order allowing extension. The Court held that an order simply allowing extension is a ministerial act and is not appealable. However, the Court clarified that an order refusing extension may have consequences, requiring reference to other appealable provisions. For instance, when a refusal of an extension may lead to rejection or deemed abandonment of a proceeding, the order may affect trademark rights and require a different analysis. In the present case, the Registrar had only allowed such extension and took the evidence affidavit on record. Therefore, the order was not without jurisdiction and did not require interference by way of an appeal.
Decision of the Court
The Court dismissed the petition and upheld the Registrar’s order dated August 26, 2025. It was held that the interest of justice necessitated an interlocutory application, especially given the history and pending rectification proceedings.
Conclusion
The Bombay High Court’s decision establishes that Rule 45 of the Trade Marks Rules, 2017 sets a directory procedural timeline and not a mandatory limitation period. The Registrar may permit evidence to be filed even after the expiry of the Rule 45 period, at their discretion, as per law. By upholding the Registrar’s discretion under Section 131 and recognising the role of Rule 48, the Court provided an important verdict on the conduct of evidence in trademark rectification proceedings.
Authors: Manisha Singh and Shivi Gupta