The Bombay High Court’s recent decision in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks marks a significant departure from the Delhi High Court’s strict approach to procedural timelines under the Trade Marks Rules, 2017. Pragya Jain explains that while the judgment seeks to prioritise substantive justice over procedural defaults, its interpretation of Rule 45 raises important questions about legislative intent, procedural certainty, and the future of trademark prosecution. Pragya is a Senior Associate at Inttl Advocare and a member of the firm’s Intellectual Property Litigation team. Her interests lie in intellectual property law, artificial intelligence, innovation, and the intersection of law and emerging technologies. The views expressed here are those of the author alone.
A Procedural Servant or a Master of Delay? A Critical Legal Analysis of the Bombay High Court’s Ruling in Black Diamond Motors
By Pragya Jain
The recent judgment of the Bombay High Court in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks (2026) has sent ripples through the intellectual property community by declaring the evidentiary timelines in Rule 45 of The Trade Marks Rules, 2017 as directory rather than mandatory. Rule 45 requires a rectification applicant/Opponent to file evidence by way of affidavit within two months of receiving the counter-statement. This decision stands in stark contrast to the Delhi High Court’s established “strict timeline” regime in Sunpharma Laboratories Ltd. vs Dabur India Ltd. & Anr. & Mahesh Gupta v. Registrar of Trade Marks & Anr., raising significant legal and practical concerns regarding the stability of trademark prosecution in India.
The dispute in the case before BHC arose from rectification proceedings in which the rectification applicant filed its evidence by way of affidavit more than three years after the expiry of the period prescribed under Rule 45. The Registrar condoned the delay by exercising powers under Section 131 of The Trade Marks Act, 1999, prompting the registered proprietor to challenge the order. The principal issue before the Court was whether the timelines prescribed under Rule 45 are mandatory in nature, thereby resulting in the automatic abandonment of rectification proceedings upon non-compliance, or merely directory, permitting the Registrar to condone the delay in appropriate cases.
The Redundancy of “Deemed Abandonment”
The most glaring legal issue with the Bombay High Court’s analysis is that it effectively renders Rule 45(2) a dead letter. Rule 45(2) explicitly states that if an opponent fails to file evidence or an intimation within two months, they “shall be deemed to have abandoned” the opposition.
The BHC states that this “deeming fiction” should be restricted and that missing this deadline should not “wipe out the underlying proceedings”. However, as the Delhi High Court noted in Mahesh Gupta, this abandonment is an “inexorable statutory sequitur” that occurs by operation of law. By treating the deadline as directory, the BHC converts a clear statutory command into a mere suggestion, potentially inviting the very “undue and infinite delays” that the 2017 Rules were designed to eliminate.
The Rule 48 “Loophole” and Logical Inconsistency
The BHC found a “wholesome answer” to the mandatory nature of Rule 45 by pointing to Rule 48, which allows the Registrar to admit “further evidence” at any time. The Court reasoned that it is “illogical” to have a mandatory cutoff in Rule 45 if the same evidence could be admitted later under Rule 48.
Critically, this reasoning creates a procedural paradox. If the Registrar can use Rule 48 to bypass the consequences of Rule 45(2), the “maximum time limit” intended by the legislature becomes illusory. It can be argued that Rule 48 is intended for newly discovered or supplemental evidence, not as a remedial tool to condone gross negligence in filing primary evidence. The BHC’s interpretation allows parties to bypass the primary evidentiary stage entirely and seek shelter under the discretionary umbrella of Rule 48.
Misapplication of Section 131 and Subordinate Legislation
The BHC’s reliance on Section 131 of The Trade Marks Act to override Rule 45 is legally contentious. Section 131 allows extensions for acts unless the time is “expressly provided in this Act”. The BHC concluded that since Rule 45 is part of the Rules and not the Act, the Registrar’s power to extend time remains absolute.
This analysis ignores the principle laid down by the Supreme Court in Chief Forest Conservator (Wildlife) v. Nisar Khan, that validly framed rules are treated as part of the Act. The Delhi High Court in Sun Pharma correctly observed that whenever a period is prescribed in the Rules, it carries the force of the Act itself. By creating a hierarchy where the Rules are subservient to a general discretionary power in Section 131, the BHC undermines the legislative intent to create a strict regimen for trade mark oppositions.
Ignoring Legislative Evolution
The BHC judgment fails to accord sufficient weight to the conscious departure in legislative policy. The transition from the 1959 Rules to the 2017 Rules saw the deliberate removal of phrases like “unless the Registrar otherwise directs” from provisions governing the filing of evidence in opposition proceedings.
As the Delhi High Court highlighted, the deletion of this discretionary language proves that the legislature intended to strip the Registrar of the power to condone delays in these specific instances. Under the 1959 Rules, the inclusion of such language preserved a measure of procedural flexibility by permitting the Registrar to relax prescribed timelines in appropriate cases. The 2017 Rules, while retaining the overall procedural framework for opposition proceedings, consciously departed from this approach by omitting these qualifying words. The BHC’s return to a directory interpretation effectively re-writes the law to mirror the 1959 regime, ignoring three decades of procedural reform aimed at speeding up the registration process. This interpretation may dilute the certainty and procedural discipline that the amended Rules were designed to achieve, potentially leading to greater uncertainty regarding statutory timelines and undermining the objective of expediting trade mark registration proceedings.
Recognizing the Substantive Distinction: Opposition vs. Rectification Proceedings
A pivotal contribution of the Bombay High Court in the Black Diamond case is its clear demarcation between opposition (pre-registration) and rectification (post-registration) proceedings. While procedural forms for both are often merged for administrative convenience, the Court held that they operate in “two different mutually exclusive domains of policy concerns”.
The Court’s primary distinction lies in the nature of the rights at stake. Opposition proceedings occur before statutory protections flow, meaning the applicant is still only an “aspirant” for registration. Conversely, rectification proceedings assail a mark where entitlements and protections are “already statutorily vested” in the registrant. Consequently, the Court reasoned that the approach to time sensitivity must vary between the two.
The Court observed that the Delhi High Court’s mandatory approach in Sun Pharma was rooted in the policy concern that “rogue” opponents might indefinitely stall the grant of a registration. In the context of rectification proceedings, an automatic deeming of abandonment solely on account of procedural non-compliance, without any adjudication of the substantive grounds challenging the validity of the registration, may lead to serious and unintended consequences. Rectification proceedings are intended to test whether a mark has been wrongly remaining on the register and often involve questions of public interest, prior rights, fraud, non-use, or statutory invalidity. If a rectification application were to stand dismissed without examination of these grounds, an allegedly invalid registration could continue to enjoy statutory protection merely because of a procedural lapse by the applicant.
The Bombay High Court found that the 2017 Rules themselves support this distinction. Under Rule 98, which governs the rectification procedure, the Rules state that Rule 45(1) (the requirement to file evidence) applies mutatis mutandis, but it does not attract the “deemed abandonment” consequence of Rule 45(2). The Court held that while the requirement to file evidence is imported into rectification, the strict penal consequence of wiping out the underlying proceeding is not.
Conclusion
While the Bombay High Court’s judgment in Black Diamond is rooted in the noble principle that “procedure is the handmaid of justice,” it risks becoming a “tyrant of delay”. By diluting the mandatory nature of Rule 45, the Court has potentially re-opened the floodgates for rogue litigants to stall the Trade Marks Register for years, directly contradicting the efficiency-driven mandate of the 2017 Rules. For practitioners, the Delhi High Court’s mandatory view remains the more legally sound approach to maintaining the purity of the Register.
