In Black Diamond Motors v Registrar of Trademarks & Anr (Commercial Miscellaneous Petition 23 of 2026), the Bombay High Court has held that the timelines for filing evidence under the Trademark Rules 2017 are directory, not mandatory, and may be extended by the registrar.
The petition challenged an order of the Trademark Registry in Mumbai, taking on record evidence filed nearly three years after the prescribed two-month period. The registrar had condoned the delay by exercising its discretionary powers.
The ruling departs from the Delhi High Court’s decisions in Sun Pharma Laboratories v Dabur India & Anr (CA (COMM IPD-TM) 146/2022) and Mahesh Gupta v Registrar of Trademarks & Anr (2023 SCC Online Del 1324), which treated such timelines as mandatory and non-extendible. It aligns instead with the Gujarat High Court’s decision in Wyeth Holdings v Controller General of Patents, Designs & Trademarks (2006 SCC Online Guj 620) and the erstwhile IP Appellate Board’s ruling in Sahil Kohli v Registrar of Trademarks & Anr (2018 SCC Online IPAB 55), both of which regarded the timelines as directory.
What the statutes say
Section 21 of the Trademarks Act 1999, as well as the corresponding provisions of the Trade and Merchandise Marks Act 1958 (the previous statute), stipulate that “any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar”. These timelines are set out in the accompanying rules – the 1959 Trademark Rules (under the 1958 Act), and the 2017 Rules (under the 1999 Act), which replaced the 2002 Rules.
Under rule 53 of the 1959 Rules, an opponent was required to file evidence within two months of service of the counter-statement, failing which the opposition would be deemed abandoned. Rule 50 of the 2002 Rules permitted a one-month extension, provided a request was filed before the registrar. Rule 45 of the current 2017 Rules, however, does not retain this extension. Accordingly, under the 1999 Act and the 2017 Rules, evidence must be filed within two months of service of the counter-statement on the opponent.
Examining the provisions governing discretionary extensions, the Delhi High Court in Sun Pharma noted that rule 106 of the 1959 Rules, rule 105 of the 2002 Rules and rule 109 of the 2017 Rules permit the registrar to extend only those time periods for which no specific provision is made. Rule 53(2) of the 1959 Rules nevertheless provided that “[i]f an opponent takes no action under sub-rule (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition”. The court held that the words “unless the Registrar otherwise directs” rendered the provision directory. However, this phrase has been deleted in corresponding provisions of the 2002 and 2017 Rules, implying that the registrar’s power to extend the evidence-filing time period has been withdrawn under the current framework.
Why the rule 45 timeline Is directory
In Black Diamond, the Bombay High Court identified the factors relevant to determining whether a procedural provision is mandatory or directory. These include:
- the consequences of non-compliance;
- the statutory language used, including words such as “shall”, “must” or “may”;
- the purpose and context of the provision;
- the injustice or inconvenience likely to result from a particular interpretation; and
- the nature of the provision itself.
The court observed that the rules establish a procedural framework intended to facilitate adjudication on the merits, rather than impose substantive limitations on parties. Treating non-compliance with rule 45 as resulting in the abandonment of the underlying proceedings would, in its view, produce a disproportionate consequence and conflict with the substantive rights conferred by the Trademarks Act 1999. A harmonious reading of the wider scheme of the rules therefore indicated that the deadline under rule 45 could not be construed as strict and inflexible.
The court also relied on rule 48, which permits either party to adduce further evidence with the registrar’s leave. Neither Sun Pharma nor Mahesh Gupta had considered the implications of this provision. Since the evidentiary framework permits evidence in support of the application under rule 46, evidence in reply under rule 47 and, at the registrar’s discretion, further evidence under rule 48, the two-month period under rule 45 could not be regarded as an absolute and non-extendible bar.
The court further examined section 131 of the Trademarks Act 1999, which empowers the registrar to extend the time for doing any act, except where the time is “expressly provided in this Act”. The period for filing evidence is prescribed by rule 45, not by the Act itself. The court contrasted this language with provisions that expressly refer to acts done “under this Act or the rules made thereunder” and concluded that a deadline prescribed only by subordinate legislation does not fall outside the registrar’s power under section 131. Rule 45 could therefore not impose a fixed timeline incapable of extension by the registrar.
Distinguishing Sun Pharma and Mahesh Gupta, the court observed that the policy concerns underlying those decisions arose in the context of delays in securing registration. The present case, by contrast, involved rectification proceedings – although the same evidentiary framework applies to both rectification and opposition proceedings – seeking to dislodge the statutory rights of a proprietor who had already obtained registration.
Looking ahead
The Bombay High Court’s decision adds to the uncertainty surrounding the timeline for filing evidence in opposition and rectification proceedings. The divergence has since deepened. In V-Guard Industries Limited v Kangaro Industries & Anr (LPA No 18 of 2026, decided on 30 July 2026), a division bench of the Madras High Court held that the two-month period under rule 45 is mandatory and cannot be extended.
Setting aside the single judge’s order, the court restored the assistant registrar’s decision treating the opposition as abandoned. It emphasised that rule 45 repeatedly uses the word “shall”, expressly prescribes abandonment as the consequence of non-compliance, and – unlike rule 50 of the 2002 Rules – contains no provision permitting an extension.
With the Bombay and Gujarat High Courts treating the timeline as directory, and the Delhi and Madras High Courts regarding it as mandatory, the treatment of delayed evidence may depend on the jurisdiction in which the dispute is adjudicated. Authoritative guidance from the Supreme Court is therefore needed to settle the proper interpretation of the statutory scheme.
