Rule 45 Evidence Deadline Is Directory, Not Mandatory: Bombay High Court

By Vikrant Rana and Ananyaa Banerjee

Introduction

In a significant ruling delivered on June 17, 2026, the Bombay High Court in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks & Anr. (Commercial Miscellaneous Petition No. 23 of 2026) has held that the 2-month deadline under Rule 45(1) of the Trade Marks Rules, 2017 (“2017 Rules”) for filing an evidence affidavit in support of an opposition or rectification application is directory and not mandatory. Hon’ble Justice Somasekhar Sundaresan upheld the Registrar’s power under Section 131 of the Trade Marks Act, 1999 (“TM Act”) to condone delays in filing such evidence, even where the application seeking extension is filed long after the deadline has expired.

The ruling directly contradicts the position taken by two Delhi High Court decisions — Sun Pharma Laboratories Ltd. v. Dabur India Ltd. (2024) and Mahesh Gupta v. Registrar of Trademarks (2024) — which had held the Rule 45 deadline to be mandatory. It also departs from endorsements of that view by the Madras High Court. This creates a significant and judicially acknowledged conflict of authority between High Courts on a question that arises routinely in trade mark proceedings across India before the IP Office.

Background of the Dispute

The Petitioner, Black Diamond Motors Pvt. Ltd. (“Registrant”), and Respondent No. 2, Black Diamond Track Parts Pvt. Ltd. (“Rectification Applicant”), are factions of the same family business — a group that had operated under the “Black Diamond” name across multiple businesses and split after a family settlement with effect from March 31, 2014.

The Registrant, incorporated on September 21, 2005, held Registration No. 1842386 in Class 12 dated July 22, 2009 for the mark “Black Diamond Motors Pvt. Ltd.“, and is engaged in the business of manufacturing tippers, tip-trailers, flatbed trailers, ash-handling bulkers, and tailor-made carriers. On August 01, 2019, the Applicant filed an application for rectification of the registered trade mark under Section 57 of the TM Act. The Registrant filed its counter-statement on November 11, 2019, which was duly served on November 14, 2019. This triggered the 2-month deadline under Rule 45(1) read with Rule 98 (which governs rectification proceedings), which expired on January 14, 2020 for filing the evidence affidavit.

Nearly 11 months after the deadline, on December 05, 2020, the Applicant submitted documents as its evidence but without the requisite accompanying affidavit. The formal interlocutory application enclosing the evidence affidavit was filed only on March 16, 2024, over 3 years after the deadline. The Registrar, by an order dated August 26, 2025 (“Impugned Order”), allowed the interlocutory application, invoking powers under Section 131 of the TM Act. Aggrieved, the Registrant preferred a statutory appeal to the Bombay High Court under Section 91 of the TM Act.

Both parties had also been engaged in a convoluted civil litigation history. Notably, a Division Bench of the Delhi High Court, in a judgment dated May 28, 2021, allowed an appeal against an injunction granted in favour of the Registrant, observing forum shopping and an approach with unclean hands. The Supreme Court refused special leave to appeal on July 12, 2021. Subsequently, on April 17, 2025, the District Court, Saket, stayed the civil suit pending disposal of the rectification proceedings — underscoring the centrality of the Registrar’s proceedings to the overall dispute.

The Core Question of Law

Both parties conceded before the Court that no decision of the Bombay High Court had directly interpreted Rule 45 of the 2017 Rules on the mandatory-versus-directory question. The corresponding provisions under the Trade Marks Rules, 2002 and the Trade Marks Rules, 1959 had been declared to be directory by multiple Courts. The bone of contention was whether the 2017 Rules had fundamentally altered this position.

The Registrant, relying on the Sun Pharma and Mahesh Gupta judgements, argued that the 2017 Rules had deliberately removed the discretionary language built into the earlier rules (specifically Rule 50 of the 2002 Rules and Rule 53 of the 1959 Rules), thereby rendering Rule 45 a mandatory provision akin to a provision of limitation. The Applicant countered that the deadline remained directory, pointing to the Gujarat High Court’s decision in Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks and the erstwhile IPAB’s ruling in Sahil Kohli v. Registrar of Trade Mark, and submitting that the wider scheme of the 2017 Rules — particularly Rules 47 and 48 — militated against a mandatory reading.

Key Legal Questions Decided

The Court addressed four distinct legal questions, all answered in favour of the directory nature of the deadline and the Registrar’s broad discretion.

1. Is the Rule 45(1) Deadline Mandatory or Directory?

   The Court held the deadline to be directory, for the following cumulative reasons:

   Rule 45 is procedural, not a limitation provision: The consequences of non-compliance are remedial (costs may be imposed under Rule 48) rather than penal. A mandatory reading would inappropriately transform a procedural timeline into a limitation period, which is a function of the parent statute and not subordinate legislation. The Court reaffirmed the principle that processual law is, as the Supreme Court held in Kailash v. Nankhu, “not to be a tyrant but a servant” in the administration of justice.

   The deeming fiction in Rule 45(2) cannot extinguish the proceedings: Rule 45(2) provides that if no action is taken within the timeframe, the opponent/applicant “shall be deemed to have abandoned” the opposition. The Court held that this deeming fiction must be confined to its purpose, creating a default position that the evidence deadline has been missed, and cannot be stretched to wipe out the substantive proceedings themselves. To hold otherwise would mean that merely missing an evidence filing deadline could override the substantive right to seek rectification under Section 57, regardless of the merits already pleaded. That, the Court found, would produce a result described as “truly absurd”. The Court further noted that when applied on a mutatis mutandis basis to rectification proceedings, reading Rule 46(2) as abandoning the rectification application would mean the Registrant is “displaced” — an outcome equally absurd.

   Mutatis mutandis application under Rule 98: Rule 98, which governs rectification proceedings, incorporates Rule 45(1) on a mutatis mutandis basis, but notably stops short of incorporating Rule 45(2). The Court found this instructive: the legislature did not intend the deeming abandonment fiction to operate in rectification proceedings.

   The wider scheme of Rules 46–48 is decisive: Rule 46 entitles the Registrant to file its own evidence affidavit; Rule 47 permits the Rectification Applicant to file evidence in reply; and Rule 48 grants the Registrar an open discretion to permit further evidence from either party on such terms, including costs, as the Registrar thinks fit. The Court reasoned that if Rule 45’s deadline were truly mandatory and its breach fatal, it would be illogical for the scheme to simultaneously permit that same party to file further evidence under Rule 47 or Rule 48. Neither Sun Pharma nor Mahesh Gupta had engaged with the implications of Rule 48 at all.

2. Does Section 131 TM Act Apply to Rule 45 Deadlines?

   Section 131(1) confers on the Registrar the power to extend time for doing “any act”, with the sole statutory exclusion being time “expressly provided in this Act.” The Court firmly rejected the Registrant’s argument that a Rule 45 timeline is “expressly provided in this Act.” A deadline in subordinate legislation (the 2017 Rules) is not “expressly provided in this Act” merely because the rules are made under the Act’s authority. The Court buttressed this by reference to the TM Act’s own drafting practice: where Parliament intended to include both the Act and the rules, it used the phrase “under this Act or Rules made thereunder” (as in Sections 91 and 128). The conscious omission of that phrase from Section 131’s exclusion is telling. Further support was found in Rule 109(1), which expands the Section 131 exclusion to cover Rule 85 and Rule 86(3) deadlines, confirming by necessary implication that all other rule-based deadlines, including Rule 45, remain within the Registrar’s extension jurisdiction.

3. Must the Extension Application Be Filed Before the Deadline Expires?

   Section 131 expressly states that extension can be granted “whether the time so specified has expired or not.” The Court held, following the Supreme Court’s analysis of a near-identically worded provision in Rohan Builders (India) Pvt. Ltd. v. Berger Paints India Ltd. on Section 29-A(4) of the Arbitration and Conciliation Act, 1996, that no limitation period can be judicially imported for filing an application under Section 131. To do so would be judicial legislation. Where Parliament has intended a limitation, it has stated it expressly (as in Section 91(2) for appeals).

4. Does the One-Month Cap Under Rule 109(2) Invalidate the Order?

   Rule 109(2) limits the Registrar’s extension to a maximum of 1 month from the date of the order granting extension. The Court held that this cap governs the additional time granted going forward from the date of disposal, not the overall gap between the original deadline and the date of the application. Since the Applicant filed its evidence affidavit together with the interlocutory application, compliance was achieved on the very date of disposal and the Impugned Order accordingly fell well within the 1-month ceiling.

5. Appealability of Extension Orders

   Section 131(2) bars any appeal against an order under Section 131. The Court held that an order simply allowing an extension of time is squarely covered by this bar and is not appealable under Section 91. However, an order refusing extension, depending on its consequential effect, such as a declaration of deemed abandonment, may attract the appellate jurisdiction of the High Court under Section 91. The Commercial Miscellaneous Petition was accordingly dismissed and the Impugned Order upheld.

Respectful Disagreement with the Delhi High Court

Hon’ble Justice Somasekhar Sundaresan undertook a careful examination of the Sun Pharma and Mahesh Gupta judgements, and by extension the Madras High Court decisions endorsing them, and respectfully disagreed for the following reasons:

• Those decisions were rendered primarily in the context of the 2002 Rules; observations on the 2017 Rules were secondary and not supported by a full examination of the Rule 45–48 scheme.
• Neither decision engaged with the implications of Rule 48’s broad discretionary power.
• They conflated the legal validity of a rule-based timeline (settled) with the question of whether such a timeline falls within Section 131’s exclusion (a separate inquiry).
• Their policy reasoning was grounded in the context of opposition proceedings, concern about delays in grant of registration, which does not apply with the same force to rectification proceedings where registration is already in place.

The Court specifically noted that opposition proceedings and rectification proceedings occupy “two different mutually exclusive domains of policy concerns”: in the former, a delay in enabling statutory protection presents the policy concern, whereas in the latter, the Registrant already enjoys statutory protection that the Applicant seeks to dislodge. The policy urgency that drove the mandatory interpretation in the aforesaid judgements therefore carry diminished weight in the rectification context. The Court instead endorsed the reasoning of the IPAB in Sahil Kohli v. Registrar of Trade Marks, which had held that the removal of express discretionary language from Rule 45 of the 2017 Rules did not eliminate the Registrar’s discretion, because Section 131 of the parent Act continues to operate.

Inter-High Court Conflict: The National Position at a Glance

This judgment creates a direct and acknowledged conflict between the Bombay High Court on one side and the Delhi and Madras High Courts on the other. Until the Supreme Court resolves this conflict, the outcome of any Rule 45 delay will depend significantly on which forum the matter is being heard before.

The Registrar of Trade Marks (Mumbai, Delhi, Chennai, Kolkata, Ahmedabad) will need to navigate this conflict in pending proceedings. Given that the Registrar’s own powers are in contention, this conflict is likely to generate further litigation until the Supreme Court provides a definitive resolution.

Conclusion

The Bombay High Court’s judgment in Black Diamond Motors is an interesting direction to the jurisprudence governing the conduct of trade mark proceedings in India. By holding that Rule 45 of the 2017 Rules prescribes a directory and not a mandatory deadline, and that Section 131 of the TM Act preserves the Registrar’s power to extend that deadline even after it has expired, the Court has tried to strike a balance between procedural discipline and substantive justice. That said, the conflict with the Delhi and Madras High Courts makes the national position uncertain. Practitioners and in-house teams must navigate the jurisdictional divide carefully until the Supreme Court provides a definitive resolution.

Points of Doctrinal Tension

Notwithstanding the careful reasoning of the Court, the judgment raises certain irregularities and inconsistencies that are likely to be tested in subsequent proceedings before a higher forum. The reasoning, with respect, conflates distinct procedural functions. Some points that merit particular attention are:

1. The Mischaracterisation of Rules 47 and 48 as a Safety Net for Primary Evidence

   A central plank of the Court’s reasoning is that Rule 47 allows further evidence and Rule 48 provides that the Registrar may allow further evidence. However, Rule 47 is a rebuttal stage with additional evidence in reply being filed rather that the primary evidence stage independent of Rule 45 – it presupposes that primary evidence under Rule 45 has already been filed and that the rejoinder affidavit is in response to the affidavit under Rule 46. Further, Rule 48 gives the Registrar discretion to call for or allow further evidence, that is, either directly at the hearing or during the proceedings but by way of filing an Interlocutory Petition – and is not a freestanding vehicle for a party to place its primary case on record any time. Neither provision, properly construed, permits a party to bypass the Rule 45 deadline and file primary evidence on its own motion. The Court’s use of Rules 47 and 48 to infer a directory intent in Rule 45 therefore rests on a reading of those provisions that sits uneasily with their text and function.

2. Legislative Intent: The Removal of Extensions Was Deliberate

   Perhaps the most significant textual difficulty with the Court’s approach concerns the legislative history of Rule 45. The Trade Marks Rules, 2002 (Rule 50) and the Trade Marks Rules, 1959 (Rule 53) both contained express provisions permitting the Registrar to extend the evidence deadline at the evidence stage itself. The 2017 Rules conspicuously omit any such extension mechanism within the evidence rules. This omission is not accidental. The 2017 Rules were introduced as part of a concerted effort to modernise and expedite trade mark proceedings in India. The removal of the in-built discretion to extend at the evidence stage, which had historically been a source of significant delay, reflects a deliberate legislative choice to tighten procedural timelines and accelerate the path to registration or cancellation. To hold that Section 131, a general power of the Registrar, steps in to restore precisely the discretion that the legislature chose to remove from the evidence rules is, at minimum, in tension with this legislative intent. The Delhi High Court’s decisions in Sun Pharma and Mahesh Gupta were substantially motivated by this legislative history, and the Bombay High Court’s departure from that position on this specific point is likely to remain a live issue before the Supreme Court.

3. The Effective Nullification of the Rule 45(2) Deeming Fiction

   The Court’s treatment of Rule 45(2), which provides that a failure to act within the prescribed timeframe results in the opposition or rectification being “deemed to have been abandoned” by the opponent or applicant for rectification, raises another concern. The Court held that this deeming fiction operates only at the evidentiary stage and cannot extinguish the substantive proceedings themselves, that is, the evidence will not be allowed but the proceedings will go on. This is bound delaying proceedings significantly, adding to the existing backlog, rather than proceeding on the basis of a simple letter of reliance, since filing evidence is optional but the procedural deadline is not. The difficulty with this approach is that it largely drains Rule 45(2) of operative force. If the deemed abandonment does not result in the termination of proceedings, and if the Registrar can always admit the evidence at a later stage under Section 131, the deeming fiction becomes effectively void. The legislature’s choice to enact an express deeming provision, rather than merely leaving the consequence of non-filing to the Registrar’s general discretion, suggests an to attach a real and defined consequence to the missed deadline. An interpretation that reduces Rule 45(2) to a procedural placeholder, capable of being overridden in virtually every case, struggles to give effect to that intent.

4. Inherent Difference in the Opposition and Cancellation Proceedings

   While the notice of opposition and application for rectification are only a statement of case (facts and grounds), they are later substantiated with supporting evidence – a stage that cannot be done away with. Herein lies one major and the only difference in both proceedings –  in an opposition, non-filing of the counter statement leads to direct abandonment of the application whereas in a rectification, non-filing of the counter statement will not lead to direct abandonment of the registration and onus will then shift automatically to the Applicant for Rectification to file their affidavit / relying letter. This shows clearly the legislature’s mindful intent of subjecting the Applicant for Rectification to a higher degree of onus while cancelling the Registered Proprietor’s right duly granted.

Significance and Implications for Trade Mark Practice

The judgment creates a divergence of judicial opinion on a question that arises with considerable frequency in the conduct of opposition and rectification proceedings before the Trade Marks Registry. Its practical significance is substantial. For opponents and rectification applicants, the ruling provides relief: missing the Rule 45 deadline does not automatically and irrevocably shut out the right to file evidence, though would be detrimental to the applicants and registered proprietors. The Registrar retains the discretion to allow evidence under Section 131 read with Rule 48, provided that sufficient cause is demonstrated, and subject to the imposition of costs if warranted. Equally, the judgment does not licence disregard for procedural deadlines. The Registrar’s power under Section 131 is conditioned on sufficient cause, and the discretion under Rule 48 is subject to conditions including costs. A party that fails to meet the Rule 45 deadline without adequate justification risks having its extension application refused on merits. The Court’s observation that the consequence of missing the deadline is “remedial and not penal” must be read together with the fact that the Registrar may still decline to condone the delay on the facts of a given case.

The ruling also carries a noteworthy doctrinal implication for rectification proceedings specifically. By identifying that the policy concerns underlying timeliness differ fundamentally between opposition and rectification proceedings, the Court has signalled that arguments premised on urgency of registration carry diminished weight once registration has already been secured. This distinction is likely to be relevant in future disputes before the Registry and the courts. It is important though to note here that it has been held time and again by the courts that if a statutory provision states the repercussion of non-filing in a prescribed timeline, it is mandatory in nature. Further, a statute and the legislative intent behind it is to be understood by relying on its essence from the actual words used, that is, text and context, rather than a conjecture of intentions.

Key Action Points for In-House Counsel and Legal Practitioners

For legal teams managing trade mark portfolios in India, this judgment has several immediate and ongoing implications:

1. Audit your pending proceedings immediately: Check all live opposition and rectification matters for Rule 45 compliance status, both as the party obliged to file evidence and as the party receiving it. Identify any matters where the counterparty has missed the Rule 45 deadline and assess whether they are likely to seek condonation under Section 131 and argue on the point of adequate justification. Identify any matters where your filings are pending and endeavour to adhere to statutory deadlines to avoid adverse orders passed on the Registrar’s discretion.
2. Do not assume a lapsed deadline means either side has lost: Under this judgment, a delay of over 3 years was condoned. In-house teams must not prematurely close risk registers for matters where the opposing party has gone silent or assume their matters dead. Either party may revive their evidence filing under Section 131. Reassess exposure on any matters where you had assumed the counterparty was time-barred. If your team has missed a Rule 45 deadline, act immediately, without delay, accompanied by the evidence affidavit and a clear affidavit explaining the reasons for delay.
3. Factor in forum differences across your portfolio: The legal risk attached to a missed Rule 45 deadline is materially different depending on registry location. Mumbai: directory (present judgment). Delhi and Chennai: mandatory (Sun Pharma; Mahesh Gupta). Ahmedabad: directory (Wyeth). One must ensure external counsel coordinates advice accordingly and that risk assessments are registry-specific, not generic. One should also factor in the possibility that the legal landscape may shift further once a final resolution is reached.
4. Understand that Rule 48 keeps proceedings alive even in extreme cases: Beyond Section 131, Rule 48 gives the Registrar a broad discretion to admit further evidence from either party on appropriate terms. This dual safety net means that the integrity of the opposition or rectification record may be restored, but typically at the cost of delay, costs orders, and reputational risk before the Registrar.
5. Maintain strict docketing discipline: The directory nature of the deadline does not diminish the importance of compliance. An evidence affidavit is the evidentiary cornerstone of any opposition or rectification proceeding. Parties who allow the Rule 45 deadline to lapse for either party without compelling justification do so at considerable litigation risk. Diligent docketing, a proactive evidence strategy, and timely compliance with the procedural framework under the 2017 Rules remain indispensable to the effective conduct of contentious trade mark matters.
6. Extension orders cannot be appealed; plan accordingly: If the Registrar allows an extension under Section 131, the Section 131(2) bar on appeals means the opposing party cannot challenge it by way of a statutory appeal under Section 91. The remedy, if at all, lies only in extraordinary writ jurisdiction — a higher threshold and a longer timeline. Factor this into your litigation strategy when advising on whether to contest or accept a condonation order.