From Mandatory to Directory: The Evolving Judicial Interpretation of Rule 45 of the Trade Mark Rules 2017

INTRODUCTION:

Procedural timelines exist to keep the Trademark Opposition and Rectification proceedings moving. But when those timelines collide with valuable proprietary rights, courts face a hard question: should a missed deadline kill a case outright, or should judges have room to look past it?

THE SPLIT: TWO COURTS, TWO PHILOSOPHIES

Rule 45 of the Trade Marks Rules, 2017 gives an Opponent two months from receiving the Counter Statement to either file Evidence by Affidavit or notify the Registrar that it will rely on its pleadings alone. Miss both, and the Rule says the Opposition is “deemed abandoned”. How strictly this line is read has split the courts.

The Delhi High Court took the hard line. A Single Judge Bench in Sun Pharma Laboratories Ltd. v. Dabur India Ltd. and Anr.[1], a position subsequently reinforced by the Division Bench in Mahesh Gupta v. Registrar of Trade Marks & Anr.[2], it held that “the two-month period prescribed for filing evidence in opposition proceedings under Rule 45 is mandatory and non-extendable”.  The Delhi High Court has taken the view that the consequence prescribed by Rule 45 follows upon non-compliance and that the Registrar cannot invoke the general extension power under Section 131 to resurrect proceedings after the prescribed period has expired.

The Bombay High Court disagreed. In Black Diamond Motors (P) Ltd. v. Registrar of Trade Marks[3], it held that “the Rule 45 timeline is directory and not mandatory” – meaning the Registrar can accept late evidence where the circumstances warrant it. On the facts, the Court upheld the Registrar’s decision to take the Affidavit of Evidence on record more than three years after the deadline had passed.

“One High Court treats the clock as absolute. The other treats it as a guideline that can bend to justice. Both claim to be reading the same Rule.”

WHERE RULE 45 ACTUALLY SITS IN THE SCHEME

Before deciding how strict the deadline should be, the Bombay High Court first placed Rule 45 in context. Opposition proceedings under Section 21 arise before registration, letting a third party challenge a mark before it is granted. Rectification proceedings under Section 57 come after registration, seeking to cancel or vary a mark already on the register. Rule 45 governs the evidence stage in both.

Crucially, the Court refused to read Rule 45 in isolation. It sits alongside Rules 46 (the Applicant’s Evidence), Rule 47 (Evidence in Reply), and Rule 48 (the Registrar’s power to admit further evidence) — a connected chain, not a standalone tripwire. The holistic reading shaped the Court's entire analysis.

DEADLINE OR GUIDELINE? REFRAMING “DEEMED ABANDONMENT”

The Bombay High Court’s central move was to call Rule 45 directory rather than mandatory – a timeline for managing the process, not a rule that extinguishes rights the moment its missed. If missing the deadline were truly fatal, the Court reasoned, Rule 48’s power to admit late evidence – and to impose costs for the delay – would serve no purpose at all. The costs mechanism, it held, shows the rules were built to remedy delay, not to punish it out of existence.

On the phrase "deemed to have abandoned", the Court insisted a strict, narrow reading: it marks a missed procedural deadline, not an automatic death of the case. Reading it as instant termination, the Court warned, would  allow procedural technicalities to override the substance of a genuine trademark dispute.

UNLOCKING DISCRETION: SECTION 131 AND RULE 109

The court then turned to where that discretion comes from. Section 131 gives the Registrar broad power to extend procedural timelines, subject only to one carve-out — timelines “expressly provided” in the Act itself.  The Court reasoned that, because the relevant limitation was prescribed in subordinate legislation rather than expressly in the Act itself, Section 131 continued to preserve the Registrar's power to extend time in appropriate cases.

It read Rule 109 the same way: that provision caps how long an extension can run, but doesn't strip the Registrar’s power to entertain a late application in the first place. Because the delay application in that case came with the Affidavit of Evidence attached, the Registrar was competent to condone the delay and admit it.

BLACK DIAMOND JUDGMENT: REDEFINING TRADEMARK PROCEDURE

If Back Diamond Motor’s reasoning gains wider acceptance, its ripple effects could reshape trademark practice well past this one dispute:

• More room to seek condonation: Parties may increasingly seek extensions on genuine grounds rather than treating a missed date as automatically fatal.

• A Registrar with real discretion: The decision backs a wider, statute-consistent scope for the Registrar to exercise judgment case by case.

• Other timelines under the microscope: Expect fresh litigation testing whether other Rule 45-style deadlines are mandatory or merely directory.

• Greater judicial clarity: The split between Delhi and Bombay High Courts invites higher-court clarification on this mandatory and directory procedural provisions.

• Merits over technicalities: The ruling nudges disputes back toward being decided on substance, especially where no real prejudice results from the delay.

• An old IP dispute renewed: it re-opens the broader question of whether valuable trademark rights should ever be forfeited purely on procedure, when the dispute could still be fairly heard.

  
  

What should practitioners do now?

Until the Supreme Court steps in and settles this split, the safer course for practitioners is simple: treat Rule 45’s two-month window as mandatory, and not directory. File on time, or file the intimation to rely on pleadings - don’t bank on a court someday reading the Rule the Bombay way.

Two old maxims explain why that caution is worth the discipline:

Interest Republicae Ut Sit Finis Litium: “It is in the interest of public that there should be an end to litigation”; cases can’t be left open indefinitely; finality is what makes the system workable at all.

Vigilantibus Non Dormientibus Jura Subveniunt: “The law assists those who are vigilant, not those who sleep over their rights”. Courts protect diligence, not delay.

Read together, the two maxims make the same point from different angles; the law rewards parties who act promptly and pursue their rights with diligence – not those who are careless, indifferent, or slow to act. And of the two, the finality principle carries the bigger warning; a system where proceedings can be reopened indefinitely, with no fixed end point, undermines the certainty that litigation is meant to deliver in the first place. Play it safe, and treat the clock as running.

Conclusion

The Delhi approach prioritises procedural certainty and finality: a deadline is a deadline, and the system runs better when everyone knows it won’t move.  Whereas, the Bombay approach places greater emphasis on preserving adjudication on the merits: a deadline should serve justice, not defeat it. Both are defeasible readings of the same Rule 45. . It remains to be seen whether other High Courts will align with Delhi or Bombay, and whether the Supreme Court will eventually provide an authoritative resolution of the issue.

Whether Black Diamond Motors represents a durable shift in trademark procedure or remains an outlier to the Delhi line of authority will likely depend on future appellate consideration. For the moment, practitioners face a genuine divergence in judicial approach: one treating Rule 45 as an inflexible procedural threshold and the other as a case-management provision capable of accommodating justified delay. Until greater judicial clarity emerges, the prudent course remains strict compliance with the prescribed timeline.

[1] Sun Pharma Laboratories Ltd. v. Dabur India Ltd. and Anr. 2024 SCC OnLine Del 813

[2] Mahesh Gupta v. Registrar of Trade Marks & Anr. 2024 SCC OnLine Del 1750

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