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Introduction

On 17 June 2026, the Bombay High Court in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks & Anr., (COMMP 23/2026) considered whether the two-month period under Rule 45 of the Trade Marks Rules, 2017 for filing evidence in a rectification proceeding is mandatory, resulting in automatic abandonment on non-compliance, or directory, allowing the Registrar to extend time under Section 131 of the Trade Marks Act, 1999.

The dispute arose after the Registrar permitted the respondent to file its evidence more than three years after the prescribed period. The petitioner challenged this as being without jurisdiction. Rejecting the challenge, the Bombay High Court held that Rule 45 is directory, reaffirming that procedural rules should facilitate justice rather than defeat substantive rights.

Facts of the Case

The petitioner, Black Diamond Motors Pvt. Ltd., manufactures commercial vehicles and registered the trademark “Black Diamond Motors Pvt. Ltd.” in Class 12 in 2009. Following a 2014 family settlement dividing the family’s business interests, the respondent, Black Diamond Track Parts Pvt. Ltd., a company from the same family, began using the name “Black Diamond Motors” in a competing business, triggering litigation across multiple forums, including an infringement suit in which the petitioner was found to have indulged in forum shopping.

During this litigation, the respondent filed a rectification application under Section 57 of the Trade Marks Act seeking cancellation of the petitioner’s mark. After the petitioner’s counterstatement, the respondent was required under Rule 45 to file its evidence affidavit within two months. Though certain documents were filed, the affidavit was not. More than three years later, the respondent filed the affidavit along with an application under Section 131 seeking an extension. The Registrar accepted the explanation, condoned the delay and took the evidence on record. The petitioner appealed to the Bombay High Court under Section 91.

Argument in Favour

The petitioner argued that the Registrar had exceeded his jurisdiction in condoning a delay of over three years. Rule 45(1) prescribes a two-month deadline, and Rule 45(2) deems the application abandoned on default; together, these left the Registrar no discretion, making the timeline mandatory. The Rules, it was argued, were meant to ensure speedy disposal, an object that permitting a multi-year delay would defeat. It was also contended that Section 131 could not be invoked after the deadline had expired, and that Rule 109 permits only a limited extension. The petitioner relied on Sun Pharma Laboratories Ltd. v. Dabur India Ltd., 2024 SCC OnLine Del 813, and Mahesh Gupta v. Registrar of Trademarks, 2024 SCC OnLine Del 1750, where the Delhi High Court had held Rule 45 to be mandatory.

Argument Against

The respondent argued that Rule 45 is a procedural provision regulating the manner of filing evidence and should be read as directory. Section 131 expressly empowers the Registrar to extend time for any act except where the Act itself prescribes the period; since Rule 45’s timeline appears only in the subordinate Rules, the Registrar retained the power to extend it. The respondent relied on Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks, 2006 SCC OnLine Guj 620, where the corresponding provision under the earlier Rules was held directory, and on Sahil Kohli v. Registrar of Trade Mark, 2018 SCC OnLine IPAB 55, where the IPAB held that Section 131 powers survived the 2017 Rules.

Court’s Decision

The Bombay High Court upheld the Registrar’s order and dismissed the appeal.

Reading Rule 45 within the wider scheme, the Court held it cannot be interpreted in isolation but must be read with Rules 46 to 48. Rule 46 lets the registered proprietor file evidence, Rule 47 allows the applicant a reply, and Rule 48 empowers the Registrar to permit further evidence at any stage whenever necessary. Reading Rule 45 as mandatory would leave the Registrar powerless to admit further evidence under Rule 48 despite that Rule’s express grant of such power, an internally inconsistent result the Court declined to accept.

On Section 131, the Court held that its exception, timelines “expressly provided” in the Act itself, cannot be stretched to cover deadlines found only in subordinate Rules. Relying on Tribhovandas Haribhai Tamboli v. Gujarat Revenue Tribunal, (1991) 3 SCC 442, on the strict construction of statutory exceptions, the Court held that the Rule 45 deadline remained extendable under Section 131. It also rejected reliance on Rule 109: Rule 109(1) narrows the Registrar’s extension power only for two specific timelines that do not include Rule 45, and the one-month cap in Rule 109(2) governs only the further time granted when an extension is allowed, not the length of delay condoned, since the respondent’s affidavit came on record the same day the extension was granted, no further month was needed and the cap was not breached.

On the deeming fiction in Rule 45(2), the Court held it must be confined to its purpose and cannot be read so broadly as to extinguish substantive rights, particularly given Rule 48’s power to admit further evidence. It relied on Kailash v. Nanhku, (2005) 4 SCC 480, on procedural law being the servant, not the master, of justice, and on Rohan Builders (India) (P) Ltd. v. Berger Paints (India) Ltd., (2025) 10 SCC 802, to hold, on a related point, that an application for extension under Section 131 can be made and allowed even after the deadline has expired. The Court agreed with the IPAB’s reasoning in Sahil Kohli, and respectfully disagreed with Sun Pharma and Mahesh Gupta for not adequately considering Rule 48.

The Court also addressed a threshold question of appealability: Section 131(2) bars any appeal from a Registrar’s order granting or refusing an extension, treating it as a ministerial act. Since the Impugned Order did no more than allow the extension, the appeal itself was not maintainable on this independent ground.

For these reasons, the Court concluded that Rule 45 is directory, and that the Registrar had validly exercised powers under Section 131 in accepting the respondent’s delayed evidence.

Conclusion

The decision is a significant ruling on procedural interpretation under the Trade Marks Act and Rules. By holding Rule 45 directory rather than mandatory, the Bombay High Court has clarified that procedural timelines should not be read so rigidly as to defeat substantive rights. The judgment harmonises Rule 45 with Rules 46 to 48, confirms that the Registrar’s Section 131 power survives expiry of a Rules-based deadline, and departs from the Delhi High Court’s approach, contributing to the evolving jurisprudence on procedural compliance in trademark proceedings. It is likely to guide the Registry in balancing procedural discipline with deciding disputes on their merits rather than on technical defaults.