Brief Legal News Write-Up
Black Diamond Motors Pvt. Ltd. Vs. Registrar of Trade Marks, Mumbai & Anr.
Date of Judgment: 17.06.2026 : Case No.: Commercial Miscellaneous Petition No. 23 of 2026 with Interim Application No. 2089 of 2026 : Neutral Citation: 2026:BHC-OS:13254 : Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction : Hon'ble Judge: Justice Somasekhar Sundaresan
The Court considered a dispute concerning the scope of the Registrar’s power to extend time for filing evidence in trademark rectification proceedings under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The case arose from allegations that the Registrar had wrongly permitted a rectification applicant to file an affidavit of evidence after a delay of more than three years by invoking powers under Section 131 of the Trade Marks Act.
The principal question before the Court was whether the two-month time limit prescribed under Rule 45 of the Trade Marks Rules, 2017 for filing an evidence affidavit is mandatory or merely directory and whether the Registrar possesses power to extend such time even after expiry of the stipulated period.
After examining the material on record and the submissions of the parties, Justice Somasekhar Sundaresan observed that Rule 45 prescribes a procedural timeline and not an inflexible limitation period. The Court held that Section 131 of the Trade Marks Act empowers the Registrar to extend timelines prescribed under the Rules even after expiry of the original period, provided sufficient cause is shown. The Court emphasized that procedural rules should not defeat substantive rights and that Rule 45 is directory rather than mandatory.
Accordingly, the Court dismissed the challenge to the Registrar’s order and upheld the extension granted for filing the evidence affidavit in the rectification proceedings. The Court affirmed the Registrar’s authority to extend time under Section 131 of the Trade Marks Act in appropriate cases.
Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.
Bombay High Court Holds Rule 45 Timeline for Trademark Evidence Is Directory and Extendable Under Section 131 of the Trade Marks Act
Introduction
The Bombay High Court's judgment in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr. is an important decision concerning procedural timelines in trademark proceedings. The ruling addresses a recurring issue before the Trade Marks Registry—whether failure to file evidence within the period prescribed under Rule 45 of the Trade Marks Rules, 2017 automatically results in loss of rights or whether the Registrar retains discretion to extend time.
The judgment is significant because trademark disputes frequently involve procedural deadlines that can affect valuable commercial rights. The Court's interpretation of Section 131 of the Trade Marks Act, 1999 clarifies the relationship between statutory powers and procedural rules. The decision has substantial implications for trademark proprietors, rectification applicants, opposition parties, intellectual property practitioners, and businesses engaged in trademark litigation.
The ruling also contributes to the ongoing judicial debate regarding whether Rule 45 should be interpreted strictly or whether flexibility is permissible where justice requires extension of time.
Factual and Procedural Background
The dispute arose from competing claims concerning the use of the expression “Black Diamond Motors.” The parties belonged to different factions of the same family business that had separated pursuant to a family settlement effective from 31 March 2014. The petitioner, Black Diamond Motors Pvt. Ltd., was the registered proprietor of Trademark Registration No. 1842386 in Class 12 for “Black Diamond Motors Pvt. Ltd.” registered on 22 July 2009.
Respondent No. 2, Black Diamond Track Parts Pvt. Ltd., initiated rectification proceedings under Section 57 of the Trade Marks Act seeking cancellation of the registered trademark. The petitioner filed its counter-statement, which was served on the rectification applicant on 14 November 2019. Under Rule 45 of the Trade Marks Rules, 2017, the rectification applicant was required to file its evidence affidavit within two months, making the deadline 14 January 2020.
No evidence affidavit was filed within the prescribed period. Instead, an interlocutory application accompanied by the evidence affidavit was filed on 16 March 2024, more than three years later. The Registrar of Trade Marks, by order dated 26 August 2025, allowed the application and accepted the evidence affidavit on record by invoking powers under Section 131 of the Trade Marks Act.
Aggrieved by the Registrar’s order, the petitioner filed the present statutory appeal under Section 91 of the Trade Marks Act before the Bombay High Court.
Dispute Before the Court
The primary issue before the Court was whether Rule 45 of the Trade Marks Rules, 2017 creates a mandatory deadline that cannot be extended after expiry of the stipulated period.
The petitioner argued that judicial precedents, particularly 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, established that the timeline under Rule 45 is mandatory and that failure to comply results in abandonment of the right to file evidence. According to the petitioner, the Registrar lacked jurisdiction to revive a right that had already been lost.
The respondent argued that Rule 45 merely prescribes a procedural timeline and that Section 131 expressly grants power to extend time prescribed by the Rules. Reliance was placed on Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks, 2006 SCC OnLine Guj 620 and Sahil Kohli v. Registrar of Trade Mark, 2018 SCC OnLine IPAB 55. The respondent contended that the Registrar’s discretionary power survives even after expiry of the original deadline.
Reasoning and Analysis of the Court
The Court undertook a detailed examination of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. It observed that Section 131 empowers the Registrar to extend time prescribed for doing any act, except where the Act itself expressly excludes such extension. The Court noted that Section 131 specifically permits extension even after expiry of the original period.
The Court distinguished between timelines prescribed directly by the statute and timelines prescribed by subordinate legislation. According to the Court, Parliament consciously used different language in various provisions of the Trade Marks Act. While certain statutory deadlines cannot be altered, timelines created through subordinate legislation remain subject to the Registrar’s discretionary powers under Section 131 unless specifically excluded.
The Court disagreed with the reasoning adopted in Mahesh Gupta and related decisions to the extent they suggested that every timeline prescribed under the 2017 Rules automatically assumes the character of a mandatory statutory limitation. The Court held that such an interpretation would unduly restrict the operation of Section 131.
The judgment relied extensively upon Sahil Kohli v. Registrar of Trade Mark, 2018 SCC OnLine IPAB 55, where the Intellectual Property Appellate Board held that deletion of specific extension provisions from Rule 45 did not extinguish the Registrar’s statutory power under Section 131. The Court expressly endorsed this reasoning and agreed that Section 131 continues to provide a mechanism for extension of time.
The Court also referred to the Supreme Court’s decision in Rohan Builders (India) (P) Ltd. v. Berger Paints (India) Ltd., (2025) 10 SCC 802, while interpreting analogous language concerning extension of time. The Supreme Court had emphasized that courts should not judicially create limitation periods where the legislature has deliberately refrained from prescribing them. The Bombay High Court found the reasoning directly applicable to Section 131.
Further, the Court observed that Rule 45 functions as an administrative procedural provision rather than a strict limitation provision. Since Section 131 itself authorizes extension even after expiry of the prescribed period, requiring applications for extension to be filed before expiry would amount to adding words to the statute.
The Court also examined Rule 109 and rejected the argument that the one-month cap on extension prevented consideration of delayed applications. It held that the one-month extension operates from the date of the Registrar’s order granting extension and does not prohibit filing of extension applications after expiry of the original period.
Finally, the Court observed that procedural rules exist to facilitate adjudication and should not be interpreted in a manner that defeats substantive rights unless the legislature clearly mandates such consequences.
Final Decision of the Court
The Bombay High Court upheld the Registrar’s order permitting the rectification applicant to place its evidence affidavit on record despite the delay. The Court concluded that Rule 45 of the Trade Marks Rules, 2017 is directory and that the Registrar possesses jurisdiction under Section 131 of the Trade Marks Act to extend time even after expiry of the original period.
The appeal filed by Black Diamond Motors Pvt. Ltd. was consequently rejected and the Registrar’s exercise of discretion was sustained. The rectification proceedings were allowed to continue with the evidence affidavit remaining on record.
Point of Law Settled
The judgment settles that the timeline prescribed under Rule 45 of the Trade Marks Rules, 2017 for filing evidence in opposition and rectification proceedings is directory and not mandatory.
The Court clarified that Section 131 of the Trade Marks Act confers substantive statutory power upon the Registrar to extend procedural timelines prescribed under the Rules, including after expiry of the original period, where sufficient cause exists.
The decision also emphasizes that subordinate legislation cannot be interpreted in a manner that nullifies a statutory discretionary power expressly granted by Parliament. The ruling is likely to have substantial impact on trademark opposition and rectification proceedings across India where parties seek condonation of delay and extension of procedural timelines.
Case Details:
Title of the Case: Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr.
Date of Judgment/Order: 17.06.2026
Case Number: Commercial Miscellaneous Petition No. 23 of 2026 with Interim Application No. 2089 of 2026
Neutral Citation: 2026:BHC-OS:13254
Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction
Name of Hon'ble Judge: Justice Somasekhar Sundaresan
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
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Headnote of the Judgment:
Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr., Bombay High Court, Commercial Miscellaneous Petition No. 23 of 2026, Neutral Citation 2026:BHC-OS:13254, decided on 17.06.2026. The petitioner challenged the Registrar’s order permitting a rectification applicant to file an evidence affidavit after substantial delay by invoking Section 131 of the Trade Marks Act, 1999. The principal issue was whether the two-month timeline under Rule 45 of the Trade Marks Rules, 2017 is mandatory or directory. The Bombay High Court held that Rule 45 prescribes a directory procedural timeline and that the Registrar possesses statutory power under Section 131 to extend time even after expiry of the prescribed period. Upholding the Registrar’s order, the Court dismissed the challenge and clarified the scope of extension powers in trademark opposition and rectification proceedings.
Infographic Thumbnail Prompt:
Create a professional legal news YouTube thumbnail featuring the Bombay High Court building, trademark registration documents, Trade Marks Registry office visuals, legal files, courtroom imagery, and trademark symbols. Display bold headline text: “BOMBAY HC ON RULE 45”, “TIME EXTENSION ALLOWED”, and “SECTION 131 POWER UPHELD”. Include a visual timeline showing a missed filing deadline followed by judicial approval of extension. Depict legal documents marked “Evidence Affidavit”, scales of justice, statutory books labeled “Trade Marks Act, 1999” and “Trade Marks Rules, 2017”, and a highlighted phrase “Rule 45 is Directory”. Use a professional blue, gold, white, and red legal theme. Emphasize trademark rectification proceedings, procedural timelines, Registrar’s discretionary powers, and extension of time under trademark law. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.
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