Deadline To File Evidence Under Rule 45 Trade Marks Rules Is Directory, Registrar Can Extend Time Under Section 131: Bombay High Court

"Processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. Procedural prescriptions are the handmaid and not the mistress, a lubricant, not a resistant in the administration of justice," Bombay High Court, in a landmark ruling, has held that the two-month deadline stipulated under Rule 45 of the Trade Marks Rules, 2017 for filing an evidence affidavit is directory and not mandatory.

Justice Somasekhar Sundaresan observed that the Registrar of Trade Marks possesses the statutory discretion under Section 131 of the Trade Marks Act, 1999, to extend such timelines even after they have expired, provided sufficient cause is shown.

The dispute arose between two factions of a family business involving the use of the mark “Black Diamond.” The Rectification Applicant (Respondent No. 2) sought the cancellation of the Petitioner's registered trademark but failed to file its evidence affidavit within the prescribed two-month period under Rule 45, leading to a delay of over three years. The Registrar of Trade Marks allowed an interlocutory application to bring the evidence on record, a decision which the Petitioner challenged by arguing that the "deemed abandonment" under Rule 45 is automatic and mandatory.

The primary question before the court was whether the deadline in Rule 45 of the 2017 Rules for filing an Evidence Affidavit is mandatory or directory. The court also examined whether the Registrar’s power under Section 131 of the TM Act to grant extensions applies to deadlines set by the Rules, and whether such an application for extension can be filed after the expiry of the original deadline.

Registrar’s Statutory Discretion Under Section 131 Overrides Rule-Based Deadlines

The court began by analyzing Section 131 of the TM Act, which empowers the Registrar to extend the time for doing any act, provided the timeline is not "expressly provided in this Act." The bench noted a crucial distinction between timelines specified in the parent statute and those created by subordinate legislation.

It was observed that while Parliament fixed certain deadlines within the Act itself, it consciously chose to allow the Registrar discretion for other acts. The court held that a deadline stipulated in the Rules—such as Rule 45—does not constitute a time "expressly provided in the Act," and therefore remains within the ambit of the Registrar’s power to grant extensions.

"Registrar Cannot Be Stripped Of Discretion By Subordinate Legislation"

Rule 45 Is An Administrative Procedural Provision, Not A Period Of Limitation

The Court emphasized that Rule 45 is a procedural regulation aimed at the orderly conduct of proceedings. Justice Sundaresan noted that interpreting the two-month window as a mandatory "statute of repose" would lead to absurd consequences, especially since subsequent Rules (Rule 47 and 48) allow for further evidence and grant the Registrar broad discretion to admit additional materials.

The bench reasoned that it would be illogical for the law to permit the filing of "further evidence" under Rule 48 while simultaneously "killing" the proceedings for a delay in filing the initial evidence under Rule 45.

"The unmistakable inference from the scheme of these provisions is that the deadline in Rule 45 is not a mandatory provision."

Deeming Fiction Of 'Abandonment' Must Be Strictly Construed

Addressing the "deemed abandonment" clause in Rule 45(2), the court held that such deeming fictions must be restricted to the purposes for which they were created. The bench observed that the failure to file an affidavit only leads to a default position that can be rectified through a successful extension application under Section 131.

The court noted that if a missed deadline automatically wiped out the underlying proceedings regardless of the merits, it would result in a direct conflict with the substantive rights created under Sections 21 and 57 of the TM Act.

"The deeming fiction can never travel beyond the main provision... it cannot, through a deeming fiction, wipe out the very underlying proceedings."

Dissent From Delhi And Madras High Court Views

The Petitioner had relied heavily on the Delhi High Court judgments in Sun Pharma Laboratories Ltd. v. Dabur India Ltd. and Mahesh Gupta v. Registrar of Trademarks, which held Rule 45 to be mandatory. However, the Bombay High Court respectfully disagreed with this interpretation.

The bench noted that the previous judgments did not fully consider the implications of Rule 48 or the overarching nature of the Registrar's discretion under Section 131. The court remarked that procedural law should serve justice rather than obstruct it through technicalities.

"Section 131 enables extension of time specified under Rule 45 at the discretion of the Registrar... it is an intrinsic pointer to the timeline under Rule 45 being directory and not mandatory."

Extension Can Be Granted Even After Expiry Of Deadline

The court clarified a significant point of practice: an application for an extension of time under Section 131 does not need to be filed before the original deadline expires. The bench drew a parallel with the Arbitration and Conciliation Act and the Limitation Act to hold that the Registrar can condone delays even if the application is made years later, subject to "sufficient cause."

Regarding Rule 109, which mentions a maximum extension of one month, the court clarified that this "one-month cap" applies to the additional time granted by the Registrar upon disposing of the extension application, and not to the total length of the delay itself.

"A core ingredient of Section 131 of the TM Act is that the extension of time... can be granted even after the time so specified has already expired."

The High Court concluded that since the Registrar had exercised discretion to allow the evidence in the interest of justice—considering the complex family history and the chequered litigation—there was no reason to interfere. The court dismissed the petition, affirming that the Registrar's order was a ministerial act that did not warrant appellate interference under Section 131(2).

Date of Decision: June 17, 2026