Trademark disputes are often shaped as much by procedure as by questions of ownership or goodwill. A missed filing deadline or delayed evidence can sometimes determine the fate of valuable intellectual property rights before the dispute is even examined on merits. But should procedural timelines automatically extinguish substantive trademark rights?
This issue came before the Bombay High Court in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks1, where Justice Somasekhar Sundaresan examined whether the timeline prescribed under Rule 45 of the Trade Marks Rules, 2017 for filing evidence by affidavit is mandatory or merely directory. The Court was also required to interpret the Registrar’s powers under Section 131 of the Trade Marks Act, 1999, the scope of “deemed abandonment” under Rule 45(2), and whether procedural timelines created through delegated legislation could still be extended after expiry of the prescribed period.
The judgment is particularly relevant because it addresses the appellate divergence between the Bombay, Delhi, and Madras High Courts on procedural flexibility in trademark proceedings while clarifying the relationship between delegated legislation and statutory discretion under the Trade Marks Act.
Origin of the Dispute and Procedural Delay
The dispute arose from rectification proceedings concerning the trademark “Black Diamond” following a split within a family business settlement. Black Diamond Motors Pvt. Ltd., the Registered Proprietor (“Registrant”), faced rectification proceedings initiated under Section 57 of the Trade Marks Act by Black Diamond Track Parts Pvt. Ltd. (“Rectification Applicant”).
Following service of the counter-statement in November 2019, the Rectification Applicant failed to file its Evidence Affidavit within the two-month period prescribed under Rule 45 of the Trade Marks Rules, 2017. Although certain documents were initially submitted in December 2020 without a supporting affidavit, the Rectification Applicant formally filed an Interlocutory Application under Section 131 of the Trade Marks Act only in March 2024 seeking extension of time while simultaneously filing the Evidence Affidavit. The delay therefore extended to nearly four years from the date of service of the counter-statement.
The Registrar allowed the application and took the affidavit on record. This order was challenged before the Bombay High Court under Section 91 of the Trade Marks Act. The Registrant argued that Rule 45 prescribed a mandatory limitation period and that failure to comply automatically resulted in “deemed abandonment” under Rule 45(2). It was further contended that Section 131 could not be invoked to extend timelines prescribed under the Rules and that any application for extension necessarily had to be filed before expiry of the original timeline.
Maintainability of the Appeal Under Section 131(2)
A significant issue before the Court concerned the maintainability of the appeal itself. The Rectification Applicant argued that an order granting extension of time under Section 131 constituted a ministerial act expressly barred from appeal under Section 131(2) of the Trade Marks Act.
The Bombay High Court accepted this distinction and held that the appeal itself was fundamentally not maintainable. Justice Sundaresan observed that an order merely allowing extension of time is procedural and ministerial in nature and therefore falls within the statutory bar under Section 131(2). However, the Court clarified that an order refusing extension may become appealable under Section 91 where its direct consequence results in termination of substantive proceedings such as opposition or rectification actions.
In this context, reliance was placed on Jagatjit Industries Ltd. v. Intellectual Property Appellate Board2, recognising that extension-related functions of the Registrar are ministerial acts intended to facilitate procedural administration.
Rule 45, Procedural Flexibility, and the Inter-Court Divergence
On merits, the Court rejected the argument that Rule 45 creates an inflexible limitation period and held that the provision is directory in nature. The Court observed that Rules 44 to 513 collectively form a procedural framework intended to facilitate adjudication rather than defeat substantive rights on technical grounds. Particular reliance was placed on Rule 48, which empowers the Registrar to permit additional evidence at any stage. According to the Court, the existence of such discretion demonstrates that the Rules do not contemplate rigid exclusion of evidence merely because an earlier procedural timeline was missed.
The judgment also addressed the divergence in judicial interpretation surrounding Rule 45. The Registrant relied upon the Delhi High Court decisions in Sun Pharma Laboratories Ltd. v. Dabur India Ltd.4 and Mahesh Gupta v. Registrar of Trade Marks5, along with subsequent Madras High Court rulings, which had interpreted Rule 45 more strictly following the 2017 Rules.
The Bombay High Court disagreed with this line of reasoning and instead endorsed the approach adopted by the Intellectual Property Appellate Board in Sahil Kohli v. Registrar of Trade Mark6. The Court held that removal of explicit extension language from Rule 45 did not eliminate the Registrar’s overarching powers under Section 131.
The Court also relied upon Kailash v. Nanhku7, reiterating that procedural law must remain a servant of justice rather than a barrier to substantive adjudication. Further reliance was placed upon Rohan Builders (India) Pvt. Ltd. v. Berger Paints India Ltd.8, where the Supreme Court held that courts cannot judicially introduce limitation requirements which the legislature itself chose not to impose.
Deemed Abandonment and Registrar’s Power to Extend Time
The Bombay High Court further clarified that Section 131 excludes only timelines “expressly provided in this Act” itself. Since Rule 45 originates from delegated legislation rather than the parent statute, the Registrar retained authority to extend the prescribed timeline. In support, the Court referred to Sections 91 and 128 of the Trade Marks Act, where Parliament expressly used the phrase “this Act or the rules made thereunder,” while no such language appears in Section 131.
With respect to Rule 45(2), the Court held that deeming fictions must be interpreted narrowly. It also noted that Rule 98 applies opposition procedure to rectification proceedings only mutatis mutandis and specifically imports Rule 45(1) without expressly incorporating Rule 45(2). According to the Court, this indicated that failure to file evidence could not automatically terminate the rectification proceedings themselves.
The Court also reconciled the nearly four-year delay with the one-month extension cap contained in Rule 109(2), clarifying that the one-month limitation applies only to the prospective period granted upon disposal of the application and not to the duration of delay preceding it. Since the Evidence Affidavit had already accompanied the application, compliance became immediate upon grant of extension.
Accordingly, the Bombay High Court upheld the Registrar’s order and dismissed the appeal as not maintainable.
Conclusion
The decision in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks clarifies the procedural framework governing extension of timelines in trademark rectification proceedings and delineates the limits of appellate intervention under Section 131(2) of the Trade Marks Act. By harmoniously interpreting Rule 45, Rule 48, Rule 109, and Section 131, the Bombay High Court held that procedural timelines contained in delegated legislation do not automatically extinguish substantive rights unless the statutory framework expressly mandates such a consequence.
For trademark litigators, in-house counsels, and IP practitioners, the ruling provides important guidance on procedural strategy in opposition and rectification proceedings, particularly amidst differing judicial approaches across jurisdictions. Equally significant is the Court’s distinction between non-appealable ministerial extension orders and decisions carrying substantive adjudicatory consequences, thereby clarifying the procedural limits of appellate remedies within trademark litigation.
Expositor(s): Adv. Aparna Shukla
