Procedural Flexibility in Trademark Evidence: The Impact of the Black Diamond Motors Judgment

Introduction : Trademark opposition and rectification proceedings depend heavily on documentary evidence. Parties must establish prior use, reputation, ownership, distinctiveness, bad faith and other facts that cannot ordinarily be proved through pleadings alone. Rule 45 of the Trade Marks Rules 2017 prescribes a two-month period for filing evidence in support of opposition or rectification proceedings.

The legal controversy has been whether this period is mandatory, so that failure to file evidence within two months automatically ends the party’s substantive participation, or directory, so that the Registrar may permit a delayed filing in appropriate circumstances.

In Black Diamond Motors Pvt Ltd v. Registrar of Trade Marks, decided by the Bombay High Court on 17 June 2026, the Court held that the two-month period under Rule 45 is directory and not mandatory. The Court further held that the deeming-abandonment provisions in Rules 45(2) and 46(2) concern the entitlement to file evidence within the specified period and do not automatically extinguish the underlying opposition or rectification proceeding.

The judgment shifts the emphasis from automatic procedural forfeiture to controlled discretion. It does not make time limits irrelevant. Rather, it recognises that procedural rules should facilitate a fair decision on trademark rights instead of defeating potentially valid claims solely because evidence was filed late.

The Rule 45 Framework

Rule 45 applies where the applicant in an opposition proceeding intends to rely on evidence in support of the application. The rule requires the applicant to file an affidavit of evidence, together with the documents relied upon, within two months from receipt of the opponent’s evidence or within the prescribed procedural stage. 

The Rules use deeming language to address non-compliance. Where the applicant does not file evidence within the prescribed period, the applicant may be treated as having elected not to rely on evidence and the matter may proceed on the basis of the existing record. A similar structure applies to evidence filed by an opponent under Rule 46.

The controversy arises because a time limit may perform two different functions. It may regulate the procedure while preserving the proceeding, or it may operate as a strict condition beyond which the party loses the right to continue. The answer depends on statutory language, the scheme of the Rules, the availability of extension powers and the consequences of treating the period as mandatory.

Mandatory and Directory Requirements

A mandatory procedural requirement must be followed strictly. Non-compliance ordinarily produces the consequence specified by law, and the authority has little or no discretion to excuse delay. A directory requirement, by contrast, guides the exercise of procedure but permits substantial compliance or extension where justice requires.

The classification is not determined solely by the use of words such as “shall.” Courts consider the purpose of the provision, the object of the legislation, the consequences of non-compliance and whether a rigid interpretation would defeat substantive rights.

In trademark proceedings, this distinction is especially important. A party may possess strong evidence of prior use or reputation, but the evidence may be delayed because of communication failures, changes in legal representation, difficulty obtaining archived records, illness, administrative error or procedural confusion. If the delay automatically ends the proceeding, the Registrar may be prevented from deciding the dispute on its merits.

The contrary concern is efficiency. Trademark opposition proceedings can become prolonged if every time limit is treated as flexible. Delayed evidence may prejudice the other party, create uncertainty for the applicant and weaken the finality of the proceeding. The directory approach must therefore be understood as a discretion subject to reasons, fairness and procedural safeguards.

Black Diamond Motors v. Registrar of Trade Marks

The Bombay High Court examined the interaction between Rule 45, the surrounding Rules and Section 131 of the Trade Marks Act 1999. Section 131 gives the Registrar power to extend time for doing an act prescribed by the Act or Rules, subject to statutory limits and conditions.

The Court held that Rule 45 was not included in the category of provisions from which the Registrar’s extension power was excluded under Rule 109(1). This supported the conclusion that the Registrar retained authority to extend the period where the circumstances justified it.

The Court also considered the internal structure of Rules 45 to 48. Treating Rule 45 as an inflexible limitation period would create tension with the broader procedural scheme. The deeming fiction could operate to regulate the party’s entitlement to file evidence within the specified timeline without automatically bringing the substantive opposition or rectification proceeding to an end.

The judgment therefore makes three connected findings:

• The two-month period under Rule 45 is directory.

• The Registrar may extend the period under Section 131, read with the applicable Rules.

• Failure to file evidence within two months does not, by itself, automatically extinguish the substantive proceeding.

The Court dismissed the challenge to the impugned order, but its reasoning clarifies the nature of the Registrar’s discretion. A delayed filing is not accepted as of right. The party must still provide a satisfactory explanation and comply with directions designed to protect the opposite party.

Earlier Judicial Approaches

The decision is significant because it departs from a stricter line of authority. The Delhi High Court has, in cases including Sun Pharma Laboratories Ltd v Registrar of Trade Marks and Mahesh Gupta v. Registrar of Trade Marks, treated the relevant evidence timelines as mandatory or strictly enforceable.

That approach emphasises the language of deemed abandonment and the need for certainty in trademark proceedings. If a party could file evidence whenever it wished, the procedural schedule would lose meaning. The strict approach also protects the other party from litigation that remains open indefinitely.

Other courts have adopted a more flexible approach where procedural rules were interpreted in light of Section 131 and the broader objective of deciding trademark rights fairly. The Madras High Court’s decision in ACE Foods Pvt Ltd v. Registrar of Trade Marks is associated with the view that procedural requirements should not be interpreted so rigidly that they defeat substantive rights.

The disagreement reflects two legitimate judicial concerns. The first is procedural discipline. The second is access to a merits-based adjudication. Black Diamond Motors gives greater weight to the second while preserving the Registrar’s ability to control delay through discretion.

Impact on Trademark Practice

The judgment requires a change in procedural strategy. Practitioners should continue treating the two-month period as a serious deadline even though it is directory. The safest course remains timely filing. The judgment is a remedy for justified delay, not a substitute for compliance.

For opponents and applicants, case-management records become more important. Parties should preserve proof of service, dates of receipt, communications with clients, requests for documents and reasons for delay. Such records may later determine whether an extension is granted.

For the Registrar, the decision creates a responsibility to develop consistent standards. If similar delays receive different treatment without reasoned distinctions, parties may challenge the exercise of discretion. Clear procedural orders, written reasons and proportionate conditions will be important for maintaining confidence in the system.

The judgment may also influence interpretation of other Trade Marks Rules. Courts may examine whether a procedural deadline is truly intended to extinguish a substantive proceeding or merely to regulate the filing sequence. The analysis will remain provision-specific, but Black Diamond Motors reinforces the broader principle that procedural provisions should not be interpreted in isolation.

Conclusion

The Bombay High Court in Black Diamond Motors Pvt Ltd v. Registrar of Trade Marks establishes that the two-month evidence timeline under Rule 45 of the Trade Marks Rules 2017 is directory rather than mandatory. Failure to file evidence within that period does not automatically extinguish the opposition or rectification proceeding. The Registrar retains power under Section 131 of the Trade Marks Act, read with the Rules, to extend time where circumstances justify it.

The decision departs from stricter approaches associated with certain Delhi High Court precedents but aligns with the principle that procedural rules should support substantive justice. Its practical impact is to prevent genuine trademark claims from being defeated automatically by procedural delay, while preserving the Registrar’s authority to impose costs, deadlines and other safeguards.

The judgment does not make timely filing unnecessary. Parties should continue to comply with Rule 45 within two months wherever possible. Where delay occurs, the party must act promptly, provide a credible explanation and demonstrate that the extension will not unfairly prejudice the opposite side. The lasting significance of Black Diamond Motors is therefore the creation of a controlled procedural flexibility: delay may be excused, but only through reasoned discretion directed toward a fair decision on trademark rights.

Author: Amrita Pradhan in case of any queries please contact/write back to us via email to content@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References

1. Black Diamond Motors Pvt Ltd v. Registrar of Trade Marks, 2026:BHC-OS:13254.

2. Trade Marks Rules, 2017, Rule 45.

3. Trade Marks Act, 1999, Section 131.

4. Trade Marks Rules 2017, Rule 109(1).

5. Sun Pharma Laboratories Ltd v. Registrar of Trade Marks, C.A.(COMM.IPD-TM) 146/2022.

6. Mahesh Gupta v. Registrar of Trade Marks, 2023 SCC OnLine Del 1324.

7. ACE Foods Pvt Ltd v. Registrar of Trade Marks, CMA(TM) No 22 of 2025.

8. Trade Marks Rules 2017, Rule 46.

9. Trade Marks Rules 2017, Rule(s) 44-48.

10. Trade Marks Act 1999, Section(s) 124 and 131.

11. Micolube India Ltd v. Rakesh Kumar, 1997 SCC OnLine Del 324.

12. M/s Patel Field Marshal Agencies v. P M Diesels Ltd., (2018) 2 SCC 112.

13. Pioneer Corporation v. Registrar of Trade Marks, 2023 SCC OnLine Del 4321.

14. SCC Times, ‘Rule 45 Trade Marks Rules: Mandatory or Directory?’ (29 June 2026) https://www.scconline.com/blog/post/2026/06/29/rule-45-trade-marks-rules-2017-analysis/