Rule 45 Deadline Under Trade Marks Rules Directory and Not Mandatory: Bombay HC

The Hon’ble Bombay High Court, in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr. (Commercial Miscellaneous Petition No. 23 of 2026), dismissed a challenge to the Registrar of Trade Marks’ order and held that the timeline prescribed under Rule 45 of the Trade Marks Rules, 2017 is directory, not mandatory. The Registrar’s order had allowed an affidavit of evidence to be brought on record despite a delay of over three years. 

The case arose from a statutory appeal under Section 91 of the Trade Marks Act, challenging an order dated August 26, 2025, passed by the Registrar of Trade Marks, Mumbai, allowing an Interlocutory Application filed by Black Diamond Track Parts Pvt. Ltd. during the pendency of the rectification proceedings.

By the impugned order, the Registrar permitted the filing of an affidavit of evidence under Rule 45 of the Trade Marks Rules, 2017 by exercising the power to extend time under Section 131 of the Trade Marks Act, notwithstanding a delay of over three years.

The principal issue was whether the timeline prescribed under Rule 45 is mandatory or directory. Examining Rules 45 to 48 of the Trade Marks Rules, 2017, the Court noted that Rule 48 expressly empowers the Registrar to permit either party to file further evidence at any stage of the proceedings on such terms as may be imposed.

The Court further observed that if the timeline under Rule 45 were interpreted as creating a strict, non-extendable deadline for filing an affidavit of evidence, it would be illogical for Rule 47 to permit evidence in reply and for Rule 48 to confer discretion upon the Registrar to permit additional evidence to be adduced. The Court held that the scheme of Rules 46 to 48 demonstrates that Rule 45 forms part of a broader procedural framework governing the filing of evidence. Accordingly, treating Rule 45 as an inflexible cut-off would render the subsequent provisions internally inconsistent. The scheme of these provisions clearly indicates that the timeline under Rule 45 is directory and not mandatory.

Examining Rule 45(2) and Rule 46(2), which provide for deemed abandonment, the Court held that the deeming fiction must be confined to the purpose for which it was created and cannot be extended so as to defeat the substantive statutory rights available in opposition or rectification proceedings. Accordingly, failure to file an affidavit of evidence within the prescribed period cannot, by itself and in all circumstances, extinguish substantive rights where the Registrar exercises powers under Rule 48 and Section 131 to permit the evidence to be brought on record.

Regarding Section 131, the Court observed that it confers an important discretionary power to extend time. However, timelines “expressly provided in this Act” fall outside the scope of this power. Rejecting the contention that the timelines prescribed under the Trade Marks Rules are excluded from the Registrar’s jurisdiction under Section 131, the Court clarified that the expression “time expressly provided in this Act” refers only to timelines specifically stipulated in the Trade Marks Act itself. Since the timeline under Rule 45 is contained in the Trade Marks Rules and does not fall within the statutory exceptions, it remains amenable to extension under Section 131.

The Court further observed that Rule 109 limits only the period of extension that may be granted by the Registrar and does not bar consideration of an application filed after expiry of the original timeline. Since the interlocutory application was accompanied by the affidavit of evidence, which was taken on record upon the application being allowed, the Court held that Rule 109 did not preclude the Registrar from entertaining the interlocutory application and taking the affidavit on record.

While arriving at its conclusion, the Court also distinguished the Delhi High Court decisions in Sun Pharma and Mahesh Gupta, observing that those decisions had not considered the implications of Rule 48 while interpreting Rule 45. In the Court’s view, Rule 48 plays a crucial role in demonstrating that the procedural timelines governing the filing of evidence are intended to facilitate adjudication rather than operate as inflexible bars.

Accordingly, the Bombay High Court upheld the Registrar’s order permitting the delayed filing of the affidavit of evidence and dismissed the petition.