From Mandatory to Discretionary: The Evolution of Rule 45 in Trademark Proceedings

The Bombay High Court recently addressed Rule 45 of the Trade Marks Rules, 2017, in the case of Black Diamond Motors. A single judge determined that the timeframe to submit an evidence affidavit is ‘directory’ rather than ‘mandatory.’ As a result, the deemed abandonment under Rules 45(2) and 46(2) pertains solely to the right to file said affidavit. Furthermore, the Court clarified that the Registrar holds the authority under Section 131 of the Trade Marks Act to extend the deadline, even well beyond its original expiration.

This ruling raises questions by merging two separate inquiries: whether the requirement to present evidence under Rule 45(1) is directory and whether the deadline for doing so also holds the same character. Importantly, a directory deadline allows for the acceptance of evidence submitted slightly late for valid reasons, but it does not transform the obligation to present evidence into a discretionary matter.

The court’s decision overlooked crucial aspects. Firstly, both a notice of opposition and a rectification application before the Registrar contain only statements of fact and grounds. Consequently, the evidence stages under Rules 45 to 47 form the substantive core of such proceedings and are not meant to be bypassed for convenience. Secondly, distinct procedures have been intentionally crafted for opposition and rectification. In opposition cases, Section 21(2) deems the application abandoned if no counter-statement is filed within two months. In rectification, the absence of a counter-statement doesn’t negate the necessity to file an evidence affidavit under Rule 45(1), signifying a higher threshold for parties challenging an already granted registration.

The ruling heavily relies on Rule 48, which permits the Registrar to admit further evidence if deemed appropriate. If interpreted as a power to allow evidence required by Rules 45 and 46, then parties could disregard the deadline and rely on Rule 48, undermining the deadline’s effectiveness. A more coherent interpretation is that Rule 48 allows additional evidence only after obligations under Rules 45 to 47 have been met, rather than as an alternative to fulfilling them.

A precedent from the Delhi High Court in Tablets (India) Limited highlighted that while presenting evidence is optional under Rule 45(1), the manner of exercising that option is not. Parties must either submit evidence or notify the Registrar of their reliance on existing pleadings. Silence is not permissible. However, the Black Diamond judgment did not address this obligation, allowing parties to remain passive while keeping proceedings active indefinitely.

The legislative history confirms that this oversight is not accidental. Rule 53(2) of the 1959 Rules gave the Registrar discretion over abandonment decisions; this was removed in 2002, capping any extension to one month. In Sunrider Corporation, this provision was deemed mandatory, and Mahesh Gupta rejected contrary interpretations. The 2017 Rules further eliminated even the one-month extension, reflecting a legislative intent to progressively withdraw discretion. Contrary to this evolution, Black Diamond reintroduces discretion via Section 131, exceeding even the original 1959 Rules.

Moreover, the judgment failed to consider key principles established by the Supreme Court. For instance, if a statute specifies consequences for non-compliance, the provision becomes mandatory, as in SCG Contracts. Additionally, courts should not alter statutory language to reach conclusions, as outlined in Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. and Padma Sundara Rao.

The judgment’s interpretation of ‘deemed abandonment’ under Section 131 seems indefensible, suggesting that missing the two-month deadline only affects the timing of the ‘Evidence Affidavit.’ It implies that applications for extensions can be filed indefinitely, effectively nullifying any real deadline and making the requirement to present evidence discretionary rather than mandatory. This open-ended approach leaves the process vulnerable to indefinite delays.