Missed a Deadline in opposition proceedings? Bombay HC says it may not be fatal.

Time and time again, procedural deadlines in trademark law have stopped matters short of merits. Whether a procedural deadline is fatal to the case or merely directory, is a question that has been answered by different courts in different ways. One such incidence is the case of Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks and Another^[1] wherein the Bombay High Court answered this question in the context of trademark rectification proceedings. This ruling reshapes the trajectory of how delay in filing evidence would be treated moving forward.

BACKGROUND OF THE CASE

The dispute took birth out of a business split within a family; with two factions contesting rights to the ‘Black Diamond’ name. During rectification proceedings, the applicant filed an evidence affidavit under Rule 45 of the Trade Marks Act, 2017 more than three years after the prescribed two month deadline had lapsed. The registrar allowed the application, effectively condoning the delay, invoking the discretionary power u/S 131 of the Trade Marks Act, 1999 to extend time. The registrant challenged this before the Bombay HC arguing that this delay in filing should not be condoned owing to the mandatory nature of the Rule 45 deadline.

MANDATORY OR DIRECTORY – HISTORY OF THE DEBATE

Under the 1959 Rules and 2002 Rules, courts had regarded equivalent deadlines as directory since those provisions explicitly built in discretion. Under the 2017 rules, things changed significantly when this explicit permission for discretion was dropped from the language. In Sun Pharma Laboratories Ltd. v Dabur India Ltd.^[2] an opposition was deemed abandoned over a mere one day delay in serving evidence. More recently, in IBM v. Tivoli Gardens^[3], a trademark contest traceable to 2003 was ultimately resolved not on merits but on whether a delay of under three years in filing evidence could be condoned. The Delhi High Court in both this case as well as Mahesh Gupta v. Registrar of Trademarks^[4] held the deadline mandatory and non extendable. On the other hand, the Gujarat HC in Wyeth Holdings Corpn.^[5] held the deadline to be directory, holding that the Registrar’s section 131 power to extend time survives. The Bombay HC has taken the latter view, which now displaces the power a party could hold over non filing of evidence within the stipulated time period.

COURT’S REASONING

Justice Sundaresan, drawing from the Supreme Court ruling in Kailash v. Nanhkhu^[6], held that procedural rules are the “handmaid and not the mistress” of justice. Therefore, according to him, a party shouldn’t be able to end a genuine trademark dispute on the failure of the other party in filing paperwork within a stipulated time period. The Court read flexibility into the statutory structure of the rules by relying on three factors;

• Rules 46 – 48 already permit late evidence submission; thus treating Rule 45 as a cut off would be contradictory to the underlying scheme of the provisions.
• Section 131 empowers the Registrar to extend time after a deadline expires and this power is barred only for deadlines fixed by the Act itself.
• Rule 45(2) cannot be read such that it displaces the power to extend or defeat other substantive rights u/S 21 and 57.

IMPLICATIONS OF THE RULING

The judgment has given rise to a pressing question, what happens to the other party’s rights when one party has no mandate of furnishing evidence within a timeframe? Justice Sundaresan has provided three checkpoints to ensure that the judgment is not treated as an open license to delay proceedings.

First, extension is not automatically granted. Section 131 requires the Registrar to be ‘satisfied’ that there is ‘sufficient cause’ for the delay before grant of an extension.

Second, compensation for delay is to be paid in costs. The Court took support of Rule 48 which allows the Registrar to admit late evidence “upon such terms as to costs or otherwise as he may think fit.”

Third, a single extension order would only grant a further period of one month calculated from the date of that order, not from the original missed deadline

Fourth, An arbitrary or unreasoned grant of extension remains open to challenge under writ jurisdiction.

In order to seek an extension now, a party must file an application under section 131 in Form TM – M after the expiry of the 2 month period. It is not necessary to file the application before the deadline ends however, the judgment has not specified any outer time limit on the application. The applicant must also demonstrate sufficient cause for the delay and also be prepared to expect conditions, typically costs to be imposed as the price of the delay. At least in theory, these safeguards feel promising.

CONCLUSION

While the judgment shifts the question of evidence filing from a rigid procedural cut off to a discretionary power, it is yet to be seen whether it addresses the concern of parties being left in an indefinite limbo owed to extensive delays. The other party has a range of remedies to choose from i.e. relying on costs, opposing the extension on facts and in appropriate cases challenging an unreasoned grant. However, whether it is right to put this burden on the other party while the party that has delayed in filing evidence enjoys a discretionary timeline is an aspect that requires consideration. Additionally, the conflict between different interpretations by different courts may require further clarity.

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^[1] Black Diamond Motors (P) Ltd. v. Registrar of Trade Marks, 2026 SCC OnLine Bom 4018.

^[2] Sun Pharma Laboratories Ltd. v. Dabur India Ltd., 2024 SCC OnLine Del 813.

^[3] International Business Machines Corpn. v. Tivoli Gardens, 2026 SCC OnLine Del 828.

^[4] Mahesh Gupta v. Registrar of Trademarks, 2024 SCC OnLine Del 1750.

^[5] Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks, 2006 SCC OnLine Guj 620.

^[6] Kailash v. Nanhku, (2005) 4 SCC 480.