Black Diamond Motors Pvt Ltd v. Registrar Of Trade Marks, Mumbai and Black Diamond Track Parts Pvt. Ltd.

This Commercial Miscellaneous Petition No. 23 of 2026 was filed by Black Diamond Motors Pvt. Ltd. (the Registrant) under Section 91 of the Trade Marks Act, 1999, challenging an order dated August 26, 2025, passed by the Registrar of Trade Marks, Mumbai. The Impugned Order allowed an Interlocutory Application dated March 16, 2024, filed by Respondent No. 2, Black Diamond Track Parts Pvt. Ltd. (the Rectification Applicant), seeking permission to file an evidence affidavit under Rule 45 of the Trade Marks Rules, 2017, despite a delay of over three years, by invoking the Registrar's powers under Section 131 of the TM Act.

The factual background involved a family dispute. The Registrant and the Rectification Applicant were factions of the same family that had split pursuant to a family settlement with effect from March 31, 2014. The Registrant, incorporated on September 21, 2005, had obtained Registration No. 1842386 in Class 12 on July 22, 2009 for the mark "Black Diamond Motors Pvt. Ltd." and was engaged in the business of tippers, tip-trailers, flatbed trailers, ash-handling bulkers, and tailor-made carriers. On August 1, 2019, the Rectification Applicant filed an application for rectification of the Registered Trade Mark under Section 57 of the TM Act. The Registrant filed its counter statement on November 11, 2019, which was served on the Rectification Applicant on November 14, 2019. Under Rule 45 of the 2017 Rules, the deadline to file the evidence affidavit was two months from the date of service of the counter statement, which fell on January 14, 2020. On December 5, 2020, the Rectification Applicant submitted documents as evidence without an accompanying affidavit. It was only on March 16, 2024—nearly four years after the counter statement was filed—that the Rectification Applicant filed the Interlocutory Application along with an Evidence Affidavit seeking an extension of time.

The core legal dispute centered on whether the deadline under Rule 45 of the 2017 Rules is mandatory or directory. The Petitioner contended, relying on decisions of the Delhi High Court in Sun Pharma Laboratories Ltd. v. Dabur India Ltd. and Mahesh Gupta v. Registrar of Trademarks, that the 2017 Rules had fundamentally changed the character of the deadline to a mandatory one, representing a conscious departure in legislative policy. The Rectification Applicant countered, relying on the Gujarat High Court's decision in Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks and the IPAB's decision in Sahil Kohli v. Registrar of Trade Mark, that the deadline was inherently directory, and that the same principle applied to the corresponding provisions of the 1959 Rules and 2002 Rules should apply to the 2017 Rules as well.

The Court, presided over by Justice Somasekhhar Sundaresan, undertook a detailed analysis of the statutory framework. It examined the language of Rule 45 of the 2017 Rules, the corresponding provisions under the 2002 Rules and 1959 Rules, and the scope of Section 131 of the TM Act read with Rule 109 of the 2017 Rules. The Court observed that the deadline under Rule 45 was directory and not mandatory, holding that procedural provisions in subordinate legislation must serve as a servant of justice delivery flowing from the parent statute and cannot be a tyrant curtailing substantive rights. The Court respectfully disagreed with the Delhi High Court's interpretation in Sun Pharma and Mahesh Gupta, noting that the observations therein did not constitute the ratio since the factual matrix in those cases involved interpretation of the 2002 Rules. The Court instead endorsed the view expressed by the IPAB in Sahil Kohli.

The Court further held that Section 131 of the TM Act read with Rule 109 of the 2017 Rules permits an extension of time subject to the Registrar being satisfied, and that the period of extension cannot exceed one month from the time when the order granting extension is made. The Court noted that Rule 109(1) marginally expands the scope of the fetter on the Registrar's jurisdiction under Section 131, but only in relation to the deadline of six months for registration of an agreement to use a registered trade mark, and does not bring within its reach the deadline under Rule 45. Since the deadline under Rule 45 was found to be directory, the allowing of an extension of time was only a ministerial act not appealable under Section 131(2) of the TM Act, and was not a decision taken without jurisdiction.

The Court concluded that the Impugned Order did not call for interference, as it rightly held that the interests of justice necessitated allowing the Interlocutory Application, particularly considering the complex factual family history of the parties and the chequered litigation they had already indulged in. Accordingly, the Commercial Miscellaneous Petition was dismissed and the Impugned Order was upheld. Given the nature of the legal issues involved, the Court declined to award costs.