From Mandatory to Discretionary: The Transformation of Rule 45 of the Trade Marks Rules

Recently, a Single Judge of the Bombay High Court in Black Diamond Motors held that the deadline to file an evidence affidavit under Rule 45 of the Trade Marks Rules, 2017 is “directory”, not “mandatory” and that deemed abandonment under Rules 45(2) and 46(2) is confined to the entitlement to file that affidavit. The Court further held that the Registrar retains power under Section 131 of the Act to extend the deadline even years after its lapse.

The judgment conflates two distinct enquiries: whether the requirement to lead evidence under Rule 45(1) is directory, and whether the deadline for doing so is directory. These are not coextensive. A directory deadline permits acceptance of evidence filed marginally late for good cause; it does not convert the obligation to lead evidence into a matter of discretion.

The Court also overlooked two material aspects. First, both a notice of opposition and a rectification application before the Registrar contain only the statement of facts and grounds; the evidence stages under Rules 45 to 47 are therefore the substantive core of the proceeding and cannot be bypassed at a party’s convenience. Second, the legislature has consciously prescribed distinct procedures for opposition and rectification. In opposition proceedings, Section 21(2) deems the application abandoned if no counter-statement is filed within two months. In rectification proceedings, however, even the absence of a counter-statement does not relieve the applicant of the obligation to file an evidence affidavit under Rule 45(1), reflecting the legislature’s deliberate imposition of a higher threshold on a party seeking to assail a registration already granted after due process. Rules 45 to 47 operate sequentially, each stage triggered only upon discharge of the preceding obligation. Therefore, the filing of an evidence affidavit under Rule 45(1) cannot be discretionary.

The judgment leans heavily on Rule 48, which lets the Registrar give leave, in any proceedings before him, to admit further evidence at any time, if he thinks fit. If this is read as a power to let in the very evidence that Rules 45 and 46 require, then a party could miss the deadline under those Rules and simply rely on Rule 48 instead, leaving the deadline and its consequence with no real effect. Therefore, a more coherent reading is narrower i.e. a power to admit additional evidence once a party has already met its obligation under Rules 45 to 47, not a route around that obligation. On this reading, Rule 48 supplements a discharged obligation rather than substituting for one that was never discharged.

The Delhi High Court in Tablets (India) Limited in the context of opposition proceedings held that while leading evidence is optional under Rule 45(1), the manner of exercising that option is not. A party must either file evidence or intimate the Registrar that it will rely on its pleadings alone. Silence is not an option. This mandatory obligation to intimate the Registrar is conspicuously absent from the Black Diamond judgment. By holding the deadline directory without imposing any corresponding obligation to intimate, the judgment permits a party to remain entirely passive and yet keep the proceeding alive indefinitely, making the proceeding wholly hostage to one party’s convenience.

The drafting history confirms this was no legislative oversight. Rule 53(2) of the 1959 Rules vested the Registrar with discretion to decide on abandonment; the 2002 Rules removed that discretion beyond the two-month period and capped any extension at one month. Sunrider Corporation held the provision mandatory, relying on the deletion of the discretionary language, a conclusion followed by Mahesh Gupta, which expressly rejected the Gujarat High Court’s contrary reading in Wyeth Holdings. The 2017 Rules went further and removed even the one-month extension. Sun Pharma traced this legislative progression and drew the same conclusion: discretion was steadily withdrawn at each successive amendment, and a general power to extend time under Section 131 cannot be invoked to restore what a specific timeline was deliberately amended to remove. Black Diamond reads the identical sequence and reaches the opposite conclusion, treating the removal of discretion as a basis to reintroduce it through Section 131, in terms wider and less bounded than even the original discretion under the 1959 Rules.

The judgment also overlooked two important principals of law envisaged by the Apex Court (a) that if a statue provides consequences of non-filing, the provision becomes mandatory as discussed in SCG Contracts and (b) it is not permissible for the court to substitute the language of a statute to reach its conclusion. The Apex Court held in Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. that a statute is best read by drawing its purpose from the text and context together, so that every word finds its place. In Padma Sundara Rao, it was held that the intention of the legislature must be found in the words it actually used, the question being not what may be supposed to have been intended but what has been said.

The same open-endedness under Section 131 is what makes the judgment’s treatment of deemed abandonment hardest to defend. The judgment holds that missing the two-month deadline does not kill the opposition or rectification application. It only means the “Evidence Affidavit deadline has been missed.” Section 131, on the judgement’s reading, can be invoked even after the deadline expires, with no limit on when such an application can be filed. An extension with no outer limit is no real deadline at all, only an open invitation to apply whenever a party chooses. What the judge calls "directory" is, in practice, indefinite. The mandatory requirement to lead evidence dissolves into discretion. Missed till when? The judgment never says, and on this reading, never has to.

Priya Adlakha is a Partner at Fidus Law Chambers.

Harshali Chauhan is a Trainee at the Firm.