The dispute arose from a rectification proceeding concerning the trademark “Black Diamond Motors Pvt. Ltd.” in Class 12. The registrant had secured registration for the mark, while the rectification applicant sought cancellation or variation of that registration. Both parties belonged to factions of the same family business, and the commercial dispute related to the right to use the expression “Black Diamond” after a family settlement.<\/p>\n
In the rectification proceedings, the registrant 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 evidence in support of rectification was to be filed within two months. The rectification applicant did not file an evidence affidavit within that period. It filed documents later without an affidavit, and in March 2024 filed an interlocutory application with an evidence affidavit, seeking extension of time and permission to bring the evidence on record.<\/p>\n
The Registrar allowed the application and took the evidence affidavit on record. The registrant challenged that order before the Bombay High Court, mainly contending that Rule 45 prescribed a mandatory deadline, that the Registrar had no power to extend it after expiry, and that the rectification applicant had abandoned its right to file evidence.<\/p>\n
The registrant argued as follows:<\/p>\n
The rectification applicant argued as follows:<\/p>\n
The Court first considered the scheme of Rules 45 to 48. Rule 45 requires the opponent, and by application to rectification proceedings the rectification applicant, to file evidence within two months or state that it does not wish to file evidence. Rule 46 gives the other side an opportunity to file evidence. Rule 47 permits evidence in reply. Rule 48 gives the Registrar power to permit further evidence at any time on terms, including costs.<\/p>\n
According to the Court, this wider scheme showed that Rule 45 could not be treated as an inflexible limitation provision. If Rule 45 were mandatory in the strict sense, Rule 47 and Rule 48 would lose much of their practical meaning because evidence could still enter the record later through further evidence. The Court said that the Rules were procedural provisions meant to help adjudication on merits, not to create a trap that destroys substantive rights.<\/p>\n
The Court also stated that the power to impose costs under Rule 48 was important. Costs exist to compensate the other side for inconvenience and expense caused by delay. This remedial consequence was different from a penal consequence. Therefore, the Court treated Rule 45 as a procedural timeline for orderly conduct of proceedings, not as a limitation provision that extinguishes the right to lead evidence.<\/p>\n
The Court held that Rule 45 is directory. Missing the deadline may require an explanation, may invite costs, and may be considered by the Registrar on facts. But it does not automatically prevent the Registrar from permitting relevant evidence to be filed.<\/p>\n
The Court then considered the phrase “deemed to have abandoned” in Rules 45 and 46. In the Court’s view, a deeming fiction must be confined to the purpose for which it is created. The purpose of Rule 45 is to regulate the filing of evidence, not to wipe out the entire opposition, application, or rectification proceeding irrespective of merits.<\/p>\n
The Court said that treating deemed abandonment as a complete end to the proceeding would produce absurd results. In rectification proceedings, such an interpretation could affect vested statutory rights flowing from registration, even though the pleadings and facts were already on record and further evidence could still be permitted under Rule 48.<\/p>\n
The Court therefore limited the effect of deemed abandonment. It held that the fiction operates in relation to the entitlement to file evidence within the stipulated deadline. It does not destroy the underlying proceeding or the substantive rights created under the Trade Marks Act.<\/p>\n
The Court next considered Section 131 of the Trade Marks Act, which empowers the Registrar to extend time for doing any act, except where the time is expressly provided in the Act. The Court drew a clear distinction between a time limit expressly provided in the Trade Marks Act and a time limit prescribed in the Trade Marks Rules.<\/p>\n
In the Court’s view, Rule 45 is a deadline in subordinate legislation. It is legally binding, but it is not a time period “expressly provided in this Act.” The exception in Section 131 must be read strictly because it limits the Registrar’s power. If Parliament intended to exclude deadlines under the Rules also, it could have said “under this Act or the rules made thereunder.” The Court noted that Parliament had used that wider phrase in other provisions of the Act, including Sections 91 and 128, but not in Section 131.<\/p>\n
The Court therefore held that Section 131 applies to the Rule 45 deadline. The Registrar may extend the time for filing evidence under Rule 45, subject to satisfaction of sufficient cause and appropriate conditions.<\/p>\n
The Court also rejected the argument that an application under Section 131 must be filed before expiry of the original period. Section 131 itself permits extension whether the time has expired or not. The Court said that reading a requirement that the extension application must be filed before expiry would amount to adding words to the statute.<\/p>\n
The Court relied on the principle that courts should not create limitation periods when the legislature has not prescribed them. The Court referred to the Supreme Court’s reasoning in the arbitration context, where a similar power to extend time before or after expiry was not treated as requiring an application before expiry. Applying that reasoning to Section 131, the Court held that the Registrar could consider and allow an application even after the Rule 45 deadline had expired.<\/p>\n
Rule 109 permits extension of time not exceeding one month. The registrant argued that allowing evidence after almost four years effectively granted an extension far beyond one month.<\/p>\n
The Court rejected this argument. In the Court’s view, the one month cap in Rule 109 refers to the additional time that may be granted from the date of the extension order. In this case, the evidence affidavit was filed along with the interlocutory application itself. Once the application was allowed, the evidence came on record immediately. The Registrar did not grant any further period beyond one month after the order.<\/p>\n
The Court therefore held that Rule 109 was not violated merely because the application for extension was filed after a long delay. Delay may be relevant to discretion, but it does not remove jurisdiction.<\/p>\n
The Court considered the Delhi High Court decisions in Sun Pharma and Mahesh Gupta, which had treated the Rule 45 deadline as mandatory. It stated that those decisions arose in the context of opposition proceedings and mainly considered the earlier rules. The Court also said that the broader scheme of Rules 45 to 48 of the 2017 Rules had not been fully considered in those decisions.<\/p>\n
The Court pointed out an important difference between opposition and rectification proceedings. Opposition proceedings arise before registration and may delay the grant of statutory rights. Rectification proceedings arise after registration, when statutory rights have already vested and are sought to be removed. Because the policy concerns differ, the same time sensitivity cannot be mechanically applied in both settings.<\/p>\n
With respect, the Court disagreed with the interpretation in Sun Pharma and Mahesh Gupta. It preferred the reasoning in Sahil Kohli, where the IPAB had held that deletion of extension language from Rule 45 did not take away the Registrar’s power under Section 131. According to the Court, Section 131 continued to operate and gave the Registrar discretion to extend time where sufficient cause was shown.<\/p>\n
The Court finally considered whether the order allowing extension of time was appealable. Section 131(2) says that the Registrar need not hear parties before disposing of an extension application and that no appeal lies from any order under Section 131.<\/p>\n
The Court held that an order merely allowing extension of time is a ministerial act and is not appealable because of the statutory bar in Section 131(2). The Court, however, made a distinction. If refusal of extension produces consequences referable to another provision, such as rejection of an opposition or application, an appeal may lie depending on the nature of the order. But a simple order granting extension of time under Section 131 does not attract an appeal under Section 91.<\/p>\n
The Court added that extraordinary arbitrary exercise of discretion may still be tested in writ jurisdiction. But a statutory appeal cannot be maintained against a simple order allowing extension of time under Section 131.<\/p>\n
The findings of the Court are as follows:<\/p>\n
Not only is Rule 45 a procedural provision, it has been consciously located amidst the wider procedural scheme regulating the filing of evidence in the conduct of Opposition Proceedings, which is also made applicable to Rectification Proceedings. If the deadline in Rule 45 were to be a mandatory stipulation akin to a provision of limitation for filing an Evidence Affidavit, it would be illogical for Rule 47 to enable the Rectification Applicant to file more evidence and for Rule 48 to grant discretion to the Registrar to permit even more evidence being led. On the contrary, the unmistakable inference from the scheme of these provisions is that the deadline in Rule 45 is not a mandatory provision. Assuming this deadline is missed, the Registrar is still entitled to permit filing of an Evidence Affidavit under Rule 48 to enable adjudication of the Rectification Application properly and to assess the facts in issue, on such conditions, including imposition of costs.<\/p><\/blockquote>\n
Paragraph 40<\/h3>\n
Therefore, in my view, applying multiple parameters, including the consequences of non-compliance with the deadline under Rule 45, the purpose and context of the scheme of the law, the absurd inconvenience of multiple rounds of further evidence coming in under Rule 48 after elevating Rule 45 to a mandatory standard, and an overall holistic reading of Rule 45 in the wider context of the scheme of the 2017 Rules, in my opinion, Rule 45 stipulates a directory deadline and not a mandatory deadline.<\/p><\/blockquote>\n
Paragraph 43<\/h3>\n
To my mind, the deeming fiction can never travel beyond the main provision in Rule 45(1) and Rule 46(1). The only requirement under Rule 45(1) and Rule 46(1) is to either file the Evidence Affidavit or confirm that it is not being filed. The failure to do so can only lead to a default position that the Evidence Affidavit deadline has been missed, and it cannot, through a deeming fiction wipe out the very underlying proceedings.<\/p><\/blockquote>\n
Paragraph 48<\/h3>\n
Section 131 of the TM Act is explicit in its terms. It confers an important discretionary power to extend time. What falls outside the scope of the Section 131 jurisdiction is any time “expressly provided in this Act”. Every other deadline can be extended by the Registrar. This is logical because when Parliament has fixed deadlines in the TM Act, Parliament has equally chosen not to allow such deadlines to be diluted by administrative action by the Registrar.<\/p><\/blockquote>\n
Paragraph 63<\/h3>\n
A core ingredient of Section 131 of the TM Act is that the extension of time specified for doing any act can be granted even after the time so specified has already expired. There is no positive stipulation that the application seeking extension of time for doing any act has to be filed before the expiry of such specified time. Considering that the power to extend time is permitted to be exercised even after the expiry of the timeline sought to be extended, without any requirement to the effect that “provided such application is filed within the time specified”, it would only follow that the application can be made even after the time has expired and such application can be adjudicated after the time has expired.<\/p><\/blockquote>\n
Paragraph 77<\/h3>\n
In other words, if the Registrar thinks it fit to grant an extension, the extension of time that he would grant when allowing the application would be for a maximum period of another month. In the instant case, the Interlocutory Application enclosed with it the Evidence Affidavit. It was allowed and therefore, on the same day, the Evidence Affidavit came on record. Therefore, the extended time for filing the Evidence Affidavit did not even need another month, which is the maximum further time that could be granted.<\/p><\/blockquote>\n
Paragraph 85<\/h3>\n
However, an order simply allowing time extension would be squarely covered by the bar on appeals under Section 131(2) of the TM Act, which has been left untouched. This provision squarely stipulates that even a hearing is not necessary to decide an application for extension of time. Indeed, an extraordinary arbitrary exercise of this discretion is not without checks and balances and would be amenable to challenge under the extraordinary writ jurisdiction under the Constitution of India. However, appeals being a creature of statute, the explicit bar on appeal under Section 131(2) would entail a bar on an appeal against a decision to grant extension of time.<\/p><\/blockquote>\n
Paragraph 93<\/h3>\n
In any case, with the deepest respect, I must point out that the comments on the 2017 Rules did not entail an examination of the wider scheme of the 2017 Rules. I have articulated above why in my view the scheme of the 2017 Rules makes the deadline in Rule 45 a directory deadline and not a mandatory deadline. I am unable to be persuaded by the reliance upon Sun Pharma and Mahesh Gupta, and for that very reason, I am also not persuaded by the decisions of the Madras High Court which rely upon or endorse Sun Pharma and Mahesh Gupta.<\/p><\/blockquote>\n
Paragraph 97<\/h3>\n
To summarise:<\/p>\n
A] The deadline in Rule 45(1) of the 2017 Rules is not mandatory; it is directory;<\/p>\n
B] The effect of the deemed abandonment of the Notice of Opposition or the application for registration under Rule 45(2) and Rule 46(2) respectively is restricted to the entitlement to file an Evidence Affidavit within the deadline stipulated in Rule 45(1) and Rule 46(1) respectively;<\/p>\n
C] The missed deadline under Rule 45 (and for that matter Rule 46) is capable of being extended under Section 131 of the TM Act, the application for which can be filed and be granted even after the expired deadline;<\/p>\n
D] Section 131 of the TM Act read with Rule 109 of the 2017 Rules permits an extension of time subject to the Registrar being satisfied, and the period by which the extension can be granted cannot exceed one month from the time when the order granting extension is made;<\/p><\/blockquote>\n
Case Citation<\/h2>\n