Appeal under Section 91 of Trade Marks Act, 1999 against Registrar's order permitting delayed evidence affidavit

Statutory appeal under Section 91 of the Trade Marks Act, 1999 against an order of the Registrar of Trade Marks allowing delayed filing of an evidence affidavit in rectification proceedings.

The Petitioner (Registrant) sought to set aside the Impugned Order dated August 26, 2025 and to disallow the late filing of the Evidence Affidavit by the Respondent No.2.

The Registrar allowed the Interlocutory Application of Respondent No.2 to bring on record an Evidence Affidavit filed with a delay of over three years, invoking Section 131 of the Trade Marks Act; the Petitioner contended that the deadline under Rule 45 of the Trade Marks Rules, 2017 is mandatory.

The Delhi High Court in Sun Pharma Laboratories Ltd. v. Dabur India Ltd. (2024 SCC OnLine Del 813) and Mahesh Gupta v. Registrar of Trademarks (2024 SCC OnLine Del 1750) held the Rule 45 deadline mandatory; the Gujarat High Court in Wyeth Holdings Corpn. v. Controller General of Patents (2006 SCC OnLine Guj 620) and the IPAB in Sahil Kohli v. Registrar of Trade Mark (2018 SCC OnLine IPAB 55) held it directory. Two Madras High Court single judges endorsed the Delhi view. The Registrar in the impugned order allowed the affidavit following the directory view.

Whether the deadline stipulated in Rule 45 of the Trade Marks Rules, 2017 for filing an Evidence Affidavit is mandatory or directory.

Petitioner (Registrant) argued that the 2017 Rules introduced a fundamental change making the deadline mandatory, relying on Delhi High Court decisions in Sun Pharma and Mahesh Gupta. Respondent No.2 (Rectification Applicant) argued that the deadline is inherently directory, consistent with the earlier rules, and relied on Gujarat High Court and IPAB decisions in Wyeth and Sahil Kohli. Both parties submitted that there was no Bombay High Court decision on the point.

The core issue that falls for consideration is whether the deadline stipulated in Rule 45 of the 2017 Rules for filing an Evidence Affidavit is mandatory or directory. Both Learned Advocates would submit that there is no decision of this High Court interpreting Rule 45 of the 2017 Rules from the prism of whether the deadline contained in it is directory or mandatory. The bone of contention is whether the 2017 Rules have fundamentally changed the character of such deadline to a mandatory deadline. Wi t hi n t wo m ont hs f r o m t he r e c e i pt of t he c opy of t he appl i c at i on ... he s hal l s e nd t o t he R e gi s t r ar on F or m T M-O a c ount e r s t at e m e nt ... In c as e no c ount e r - s t at e m e nt ha s be e n f i l e d ... t he appl i c ant f or r e c t i f i c at i on s hal l f i l e e v i de nc e ... unde r t he pr ov i s i ons of r ul e 45(1) .

July 22, 2009: Registrant obtained registration no. 1842386 for 'Black Diamond Motors Pvt. Ltd.' in Class 12. August 1, 2019: Rectification Applicant filed rectification application under Section 57. November 11, 2019: Registrant filed counter statement. November 14, 2019: Counter statement served on Rectification Applicant. January 14, 2020: Deadline for Evidence Affidavit (2 months from service). January 4, 2020: Registrant withdrew infringement suit from Bilaspur court. March 4, 2020: Registrant filed notice of opposition. July 20, 2020: Delhi district court granted ad interim injunction. September 25, 2020: Injunction made absolute. December 5, 2020: Rectification Applicant submitted documents without affidavit. May 28, 2021: Delhi High Court allowed appeal setting aside injunction. July 12, 2021: Supreme Court dismissed SLP. March 16, 2024: Rectification Applicant filed Interlocutory Application with Evidence Affidavit. August 26, 2025: Registrar allowed the application (Impugned Order). October 24, 2025: Registrant filed Evidence Affidavit under Rule 46. November 20, 2025: Rectification Applicant filed Evidence Affidavit in reply under Rule 47. April 17, 2025: District Court Saket stayed suit pending rectification proceedings. June 17, 2026: Bombay High Court heard the appeal; judgment text provided incomplete.

• Trade Marks Act, 1999: 21, 57, 91, 131, 157
• Trade Marks Rules, 2017: 42, 43, 45, 46, 47, 51, 97, 98, 100