The Bombay High Court has delivered a significant ruling on the interpretation of Rule 45 of the Trade Marks Rules, 2017, holding that the two-month deadline for filing an Evidence Affidavit in rectification proceedings is directory and not mandatory. This judgment clarifies the scope of the Registrar of Trade Marks' discretion under Section 131 of the Trade Marks Act, 1999 to extend deadlines, even after their expiry, ensuring that procedural technicalities do not defeat substantive justice.
Background & Facts
The Dispute
The dispute involves Black Diamond Motors Pvt. Ltd. (Registrant) and Black Diamond Track Parts Pvt. Ltd. (Rectification Applicant), two entities from the same family that split pursuant to a family settlement dated March 31, 2014. The Registrant holds Registration No. 1842386 for the trademark "Black Diamond Motors Pvt. Ltd." in Class 12, covering vehicles and related products. The Rectification Applicant sought to cancel this registration under Section 57 of the Trade Marks Act, 1999, alleging improper registration and breach of the family settlement.
Key Facts
- September 21, 2005: Registrant incorporated.
- July 22, 2009: Registrant’s trademark registered.
- March 31, 2018: Rectification Applicant applies for registration of a similar trademark.
- August 1, 2019: Rectification Application filed under Section 57 of the TM Act.
- November 11, 2019: Registrant files counter-statement to the Rectification Application.
- November 14, 2019: Counter-statement served on the Rectification Applicant. The deadline for filing the Evidence Affidavit under Rule 45 was January 14, 2020.
- December 5, 2020: Rectification Applicant submits documents without an affidavit.
- March 16, 2024: Rectification Applicant files an Interlocutory Application with an Evidence Affidavit, seeking extension of time under Section 131 of the TM Act.
- August 26, 2025: Impugned Order passed by the Registrar of Trade Marks, allowing the Interlocutory Application and bringing the Evidence Affidavit on record despite a delay of over three years.
Procedural History
- June 2018: Registrant files trademark infringement suit in District Court, Bilaspur.
- August 6, 2019: Interim injunction denied by the District Court.
- October 24, 2019: Chhattisgarh High Court dismisses appeal against the denial of interim relief.
- March 4, 2020: Registrant files Notice of Opposition to the Rectification Applicant’s trademark application.
- July 20, 2020: District Court, Saket grants ad interim injunction in a fresh suit filed by the Registrant.
- September 25, 2020: Injunction made absolute.
- May 28, 2021: Delhi High Court allows appeal against the injunction, finding forum shopping and unclean hands.
- July 12, 2021: Supreme Court refuses special leave to appeal against the Delhi High Court’s order.
- April 17, 2025: District Court, Saket, stays the suit pending disposal of the Rectification Proceedings.
- August 26, 2025: Impugned Order passed, allowing the Interlocutory Application.
- October 24, 2025: Registrant files its Evidence Affidavit under Rule 46.
- November 20, 2025: Rectification Applicant files its Evidence Affidavit in reply under Rule 47.
- June 17, 2026: Present judgment delivered by the Bombay High Court.
Relief Sought
The Petitioner sought to quash the Impugned Order dated August 26, 2025, arguing that the deadline under Rule 45 was mandatory and that the Registrar lacked jurisdiction to extend it under Section 131 of the TM Act.
The Legal Issue
The central question was whether the two-month deadline stipulated in Rule 45 of the Trade Marks Rules, 2017 for filing an Evidence Affidavit in Rectification Proceedings is mandatory or directory, and whether the Registrar of Trade Marks has the power under Section 131 of the Trade Marks Act, 1999 to extend this deadline even after its expiry.
Arguments Presented
For the Petitioner
- Relied on judgments of the Delhi High Court in Sun Pharma Laboratories Ltd. v. Dabur India Ltd. and Mahesh Gupta v. Registrar of Trademarks, which held that the deadline under Rule 45 is mandatory.
- Argued that the 2017 Rules marked a conscious departure from the 2002 Rules and 1959 Rules, where deadlines were held to be directory.
- Contended that allowing the Impugned Order would render the deadline under Rule 45 meaningless and encourage delays.
- Submitted that the Registrar’s power under Section 131 does not extend to deadlines stipulated in the Rules, as they are deemed to be "expressly provided" under the TM Act.
For the Respondent
- Relied on judgments of the Gujarat High Court in Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks and the Intellectual Property Appellate Board (IPAB) in Sahil Kohli v. Registrar of Trade Mark, which held that the deadline under Rule 45 is directory.
- Argued that Section 131 of the TM Act empowers the Registrar to extend deadlines for sufficient cause, even after expiry, and that this power is not restricted by Rule 45.
- Submitted that Rule 48 of the 2017 Rules confers discretion on the Registrar to allow further evidence, indicating that Rule 45 is directory.
- Contended that the Impugned Order was a ministerial act not appealable under Section 131(2) of the TM Act.
The Court's Analysis
The Court undertook a holistic interpretation of Rule 45 in the context of the scheme of the 2017 Rules and Section 131 of the TM Act, applying the principles of statutory interpretation as laid down in Justice G.P. Singh’s Principles of Statutory Interpretation and Kailash v. Nankhu.
Interpretation of Rule 45
The Court observed that Rule 45 is part of a procedural framework governing Opposition Proceedings and Rectification Proceedings under the TM Act. The Rule stipulates a two-month deadline for filing an Evidence Affidavit, failing which the opposition or application is deemed abandoned under Rule 45(2) and Rule 46(2).
"The question as to whether a statute is mandatory or directory depends upon the intent of the Legislature and not upon the language in which the intent is clothed. The meaning and intention of the Legislature must govern, and these are to be ascertained not only from the phraseology of the provision, but also by considering its nature, its design, and the consequences which would follow from construing it the one way or the other."
The Court held that Rule 45 must be interpreted in light of the wider scheme of the 2017 Rules, particularly Rules 46 to 48, which provide for:
- Rule 46: Registrant’s right to file an Evidence Affidavit within two months of receiving the Rectification Applicant’s affidavit.
- Rule 47: Rectification Applicant’s right to file a reply affidavit within one month.
- Rule 48: Registrar’s discretion to allow further evidence on such terms as to costs or otherwise.
The Court reasoned that if Rule 45 were mandatory, it would render Rules 47 and 48 otiose, as no further evidence could be led after the deadline. This would defeat the objective of the TM Act, which is to ensure fair adjudication of disputes.
Deeming Fiction Under Rules 45(2) and 46(2)
The Court clarified that the deeming fiction of abandonment under Rule 45(2) and Rule 46(2) is restricted to the failure to file an Evidence Affidavit within the stipulated time. It does not extinguish the underlying proceedings, as this would lead to absurd consequences, such as the automatic success of a Rectification Application or Notice of Opposition merely due to procedural default.
"The deeming fiction can never travel beyond the main provision in Rule 45(1) and Rule 46(1). The only requirement under Rule 45(1) and Rule 46(1) is to either file the Evidence Affidavit or confirm that it is not being filed. The failure to do so can only lead to a default position that the Evidence Affidavit deadline has been missed, and it cannot, through a deeming fiction, wipe out the very underlying proceedings."
Scope of Section 131 of the TM Act
The Court analyzed Section 131 of the TM Act, which empowers the Registrar to extend time for doing any act "not being a time expressly provided in this Act". The Court held that:
- Deadlines under the Rules are not "expressly provided" in the TM Act and are therefore extendable under Section 131.
- The Registrar’s power to extend time is not limited to applications filed before the expiry of the deadline. The Court relied on the Supreme Court’s judgment in Rohan Builders (India) (P) Ltd. v. Berger Paints (India) Ltd., which interpreted a similar provision under the Arbitration and Conciliation Act, 1996.
- Rule 109(2) of the 2017 Rules, which caps the extension period at one month, does not restrict the Registrar’s discretion under Section 131. The Court held that the one-month limit applies only to the additional time granted upon disposal of the application, not to the filing of the application itself.
Ministerial Act and Appealability
The Court held that the grant of extension under Section 131 is a ministerial act, as it involves administrative discretion rather than adjudicatory decision-making. Section 131(2) explicitly bars appeals against orders passed under Section 131, reinforcing this characterization.
"An order simply allowing time extension would be squarely covered by the bar on appeals under Section 131(2) of the TM Act, which has been left untouched. This provision squarely stipulates that even a hearing is not necessary to decide an application for extension of time."
However, the Court noted that orders refusing extension could still be appealable if they affect substantive rights, such as deemed abandonment under Rule 45(2) or Rule 46(2).
Critique of Precedents
The Court distinguished the judgments in Sun Pharma and Mahesh Gupta, which held that Rule 45 is mandatory. The Court observed that these judgments:
- Were rendered in the context of Opposition Proceedings, where delay in registration is a policy concern, unlike Rectification Proceedings, where the Registrant already enjoys statutory protection.
- Did not consider the wider scheme of the 2017 Rules, particularly Rule 48, which confers discretion on the Registrar to allow further evidence.
- Misinterpreted Section 131, equating deadlines under the Rules with those "expressly provided" in the TM Act.
The Court endorsed the IPAB’s decision in Sahil Kohli, which held that Rule 45 is directory and that Section 131 empowers the Registrar to extend deadlines even after expiry.
The Verdict
The Bombay High Court dismissed the Petition and upheld the Impugned Order. The Court held that:
- The two-month deadline under Rule 45 of the 2017 Rules is directory, not mandatory.
- The Registrar has the power under Section 131 of the TM Act to extend the deadline for filing an Evidence Affidavit, even after its expiry.
- The Impugned Order was not appealable under Section 131(2) of the TM Act, as it was a ministerial act.
- No costs were awarded, considering the complex legal issues involved.
What This Means For Similar Cases
Procedural Deadlines Are Directory, Not Mandatory
- Practitioners must argue that procedural deadlines in subordinate legislation, such as the Trade Marks Rules, are directory unless the parent statute explicitly mandates them as mandatory.
- Courts will interpret deadlines in light of the scheme of the legislation, the consequences of non-compliance, and the availability of remedial measures (e.g., Rule 48 or Section 131).
- Deeming fictions (e.g., deemed abandonment) will be restricted to their intended purpose and not extended to defeat substantive rights.
Registrar’s Discretion Under Section 131 Is Broad
- Applications for extension can be filed even after the expiry of the deadline, and the Registrar can grant extensions for sufficient cause.
- The one-month cap under Rule 109(2) applies only to the additional time granted upon disposal of the application, not to the filing of the application itself.
- Orders granting extension are not appealable under Section 131(2), but orders refusing extension may be appealable if they affect substantive rights.
Policy Concerns Differ Between Opposition and Rectification Proceedings
- Opposition Proceedings involve pre-registration disputes, where delay in registration is a key policy concern.
- Rectification Proceedings involve post-registration disputes, where the Registrant already enjoys statutory protection, and delay in adjudication is the primary concern.
- Courts will distinguish precedents based on the type of proceeding and the underlying policy concerns.
Key Takeaways for Practitioners
- Always file Evidence Affidavits within the stipulated deadline to avoid procedural complications.
- If the deadline is missed, file an Interlocutory Application under Section 131 at the earliest opportunity, demonstrating sufficient cause for the delay.
- Rely on Rule 48 to argue for the admission of further evidence if necessary, even if the Rule 45 deadline is missed.
- Distinguish between Opposition and Rectification Proceedings when citing precedents, as the policy concerns differ significantly.
- Challenge orders refusing extension if they affect substantive rights, but accept orders granting extension as non-appealable ministerial acts.
