Introduction

In trademark proceedings, procedural timelines are designed to bring discipline, certainty and expedition to the adjudicatory process. But does the expiry of a procedural deadline automatically extinguish a party’s right to place relevant evidence before the Registrar?

The Bombay High Court’s judgment in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr., decided by Justice Somasekhar Sundaresan on 17 June 2026, answers this question in the negative.

The Court held that the two-month period prescribed under Rule 45(1) of the Trade Marks Rules, 2017 for filing evidence in support of an opposition is directory and not mandatory. More importantly, the Court held that the Registrar retains the power under Section 131 of the Trade Marks Act, 1999 to extend the time for filing such evidence, even after the prescribed period has expired.

The decision is significant because it directly engages with conflicting judicial approaches to Rule 45 and places the procedural scheme of the 2017 Rules within the broader architecture of the parent statute.

Its central message is clear: procedural rules must facilitate adjudication; they should not become instruments for defeating substantive rights.

The Dispute Behind the Procedural Question

The proceedings arose from a dispute between two factions of the same family concerning the use of “Black Diamond Motors.” Black Diamond Motors Pvt. Ltd., the petitioner, was the registered proprietor of Trade Mark Registration No. 1842386 in Class 12 for the mark “Black Diamond Motors Pvt. Ltd.”, registered on 22 July 2009. Its business included tippers, tip-trailers, flatbed trailers, ash-handling bulkers and tailor-made carriers.

Black Diamond Track Parts Pvt. Ltd. subsequently initiated rectification proceedings against the registration under Section 57 of the Trade Marks Act.

The procedural controversy arose because the rectification applicant did not file its evidence affidavit within the prescribed period. The counter-statement had been served on 14 November 2019, making 14 January 2020 the relevant deadline under Rule 45. However, documents were filed on 5 December 2020 without an accompanying affidavit, and the formal application seeking extension of time and bringing the evidence affidavit on record was filed only on 16 March 2024.

The Registrar ultimately allowed the application on 26 August 2025.

Black Diamond Motors challenged that decision before the Bombay High Court.

The central issue was therefore not whether the underlying trademark should ultimately remain registered. It was whether the Registrar had jurisdiction to permit evidence after the Rule 45 deadline had expired.

Rule 45: Mandatory or Directory?

Rule 45(1) provides that an opponent must file its evidence affidavit within two months of service of the counter-statement. Rule 45(2) further provides that if the opponent takes no action within the prescribed period, the opposition is deemed to have been abandoned.

At first sight, the language appears strict.

The petitioner relied upon decisions including Sun Pharma Laboratories Ltd. v. Dabur India Ltd. and Mahesh Gupta v. Registrar of Trade Marks, where the Delhi High Court had treated the relevant deadline as mandatory. The petitioner argued that the 2017 Rules represented a conscious departure from the earlier regime under the 1959 and 2002 Rules.

The respondent, however, relied upon authorities including Wyeth Holdings Corporation v. Controller General of Patents, Designs & Trade Marks and Sahil Kohli v. Registrar of Trade Mark, contending that the deadline remained directory and could be extended under Section 131.

The Bombay High Court ultimately accepted the latter approach.

The Court’s Holistic Reading of the Rules

Justice Sundaresan did not determine the character of Rule 45 merely by examining the word “shall”.

Instead, the Court examined the entire procedural architecture of Rules 44 to 51.

This was crucial.

Rule 45 deals with evidence by the opponent. Rule 46 provides a further opportunity for the applicant to file evidence. Rule 47 permits evidence in reply, while Rule 48 expressly empowers the Registrar to allow further evidence upon such terms as to costs or otherwise as the Registrar considers appropriate.

The Court reasoned that treating Rule 45 as an absolute and fatal deadline would sit uneasily with the existence of Rule 48.

If the expiry of Rule 45 permanently extinguished the ability to place evidence before the Registrar, the Registrar’s subsequent power under Rule 48 to permit further evidence would become difficult to reconcile with the statutory scheme.

The Court therefore concluded that the deadline regulates procedure, rather than creating an absolute limitation extinguishing the underlying proceedings.

“Processual Law Is Not to Be a Tyrant”

One of the most compelling aspects of the judgment is its reliance on the Supreme Court’s jurisprudence concerning procedural law.

Drawing upon Kailash v. Nanhku, the Court emphasised the principle that procedural law should operate as an instrument facilitating justice rather than obstructing it.

This principle becomes especially important in intellectual-property proceedings.

Trademark opposition and rectification proceedings ultimately concern substantive commercial rights: ownership, validity, goodwill and the continued protection of a registered mark.

A procedural default concerning the filing of evidence should therefore not automatically be elevated into an irreversible destruction of substantive rights unless the legislature has clearly intended that consequence.

The Court found that the scheme of the 2017 Rules did not justify such an extreme interpretation.

Section 131: The Statutory Safety Valve

The decisive provision was Section 131 of the Trade Marks Act, 1999.

Section 131 empowers the Registrar, upon being satisfied that there is sufficient cause, to extend the time for doing an act where the time is not expressly provided in the Act. Significantly, the provision permits extension even where the prescribed period has already expired.

The Court placed considerable emphasis on the distinction between a deadline prescribed by the parent Act and one created by subordinate legislation.

The exclusion in Section 131 applies to time periods “expressly provided” in the Trade Marks Act. The Court held that this expression cannot automatically be expanded to include every procedural timeline contained in the Rules.

Thus, merely because Rule 45 possesses legal force as subordinate legislation does not mean that its deadline becomes a deadline “expressly provided” in the Act for the purposes of excluding the Registrar’s Section 131 jurisdiction.

This distinction forms a central pillar of the judgment.

A Deadline Cannot Be Converted Into Limitation by Judicial Interpretation

The Court was particularly cautious about importing a limitation period where the legislature had not expressly created one.

The judgment drew support from the Supreme Court’s decision in Rohan Builders (India) Pvt. Ltd. v. Berger Paints (India) Ltd., which cautioned against judicially prescribing a limitation period where the statute itself had not done so.

The Bombay High Court applied that reasoning to Section 131.

Where Parliament expressly intends a limitation period to have fatal consequences, it knows how to say so. The Court pointed to Section 91 of the Trade Marks Act, which expressly prescribes a three-month period for appeals and provides a specific mechanism for condonation of delay.

Rule 45 contains no comparable legislative architecture.

Accordingly, the Court declined to transform a procedural timeline into a limitation provision by interpretation.

The One-Month Extension: What Does It Actually Mean?

The petitioner raised another significant argument.

Rule 109(2) provides that an extension under Section 131 may not exceed one month. It was argued that permitting an evidence affidavit nearly four years after the original deadline effectively circumvented this statutory limit.

The Court rejected this interpretation.

The one-month ceiling relates to the period of extension granted by the Registrar when disposing of the extension application, and not to the period that may have elapsed between the original deadline and the filing of the application seeking extension.

Thus, where the Registrar allows the application and the evidence affidavit is brought on record contemporaneously with that order, the extension granted does not become a four-year extension merely because the application itself was filed years after the original deadline.

This is a subtle but important distinction.

The Court therefore held that the Interlocutory Application could validly be filed after expiry of the Rule 45 period.

Rectification and Opposition Are Not Identical

The judgment also makes an important conceptual distinction between opposition proceedings and rectification proceedings.

Although the 2017 Rules use a broadly similar procedural mechanism for both, their policy contexts are different.

An opposition is filed before registration and therefore concerns whether statutory protection should arise in the first place.

Rectification, by contrast, occurs after registration, when statutory rights and protections have already vested in the registered proprietor.

The Court observed that the policy concern surrounding delay in opposition proceedings—particularly delay in granting registration—cannot simply be transplanted into rectification proceedings.

This distinction weakened the reliance placed upon decisions dealing principally with opposition proceedings.

The Court’s Treatment of Conflicting Precedents

The judgment is also noteworthy for its respectful but explicit disagreement with the approach adopted in Sun Pharma and Mahesh Gupta.

Justice Sundaresan observed that those decisions had not sufficiently considered the wider scheme of Rules 45 to 48, particularly the significance of Rule 48 and its express discretion to permit further evidence.

The Court consequently held that the observations in those decisions concerning the 2017 Rules did not constitute the ratio necessary to determine the present issue, since the factual matrices in those cases involved the 2002 Rules.

Instead, the Court found the reasoning in Sahil Kohli persuasive, particularly its conclusion that removing express extension language from Rule 45 does not, by itself, eliminate the Registrar’s statutory power under Section 131.

The Decision

The Court ultimately held:

• Rule 45(1)’s two-month deadline is directory, not mandatory.
• Failure to meet it does not automatically extinguish the underlying opposition or rectification proceedings.
• The Registrar may extend the period under Section 131 even after expiry of the original deadline.
• The application seeking extension need not necessarily be filed before the original deadline expires.
• The extension granted under Rule 109 cannot exceed one month from the date of the order granting it.
• An order simply granting extension under Section 131 is generally protected from statutory appeal by Section 131(2), although other consequences may potentially engage appellate jurisdiction under Section 91.

The Commercial Miscellaneous Petition was accordingly dismissed, and the Registrar’s order was upheld.

Conclusion

Black Diamond Motors is an important decision on the relationship between procedural discipline and substantive justice in Indian trademark administration.

Its significance extends beyond Rule 45.

The judgment establishes a broader interpretative principle: a procedural provision contained in subordinate legislation should not be read in isolation or converted into a fatal limitation period unless the statutory scheme clearly requires that consequence.

By examining Rules 45 to 48 alongside Section 131, the Bombay High Court adopted a purposive interpretation that preserves the Registrar’s ability to consider relevant evidence where the interests of justice require it, while still permitting appropriate conditions, including costs, to address procedural default.

For trademark practitioners, the decision is equally a warning and a safeguard. The timelines prescribed under the Trade Marks Rules must be treated seriously. A litigant should never assume that delay will automatically be condoned. But where a genuine procedural default occurs, the statutory framework retains a mechanism for seeking relief.

The enduring lesson from Black Diamond Motors is therefore best expressed in the Court’s own jurisprudential approach: procedure is intended to serve justice, not to become an obstacle that defeats it.