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

In the world of intellectual property, procedural rules are often treated as sacred deadlines. Miss them, and you lose your case. But what happens when a delay stretches beyond three years? Should the court slam the gavel shut, or should it ask whether justice has truly been served? A recent Bombay High Court decision in a bitter family trademark dispute answers this question with a powerful reminder: procedural provisions must be servants of justice, not tyrants that curtail substantive rights.

The dispute centers on the 'Black Diamond' name, a brand caught in the crossfire of a family split. Two factions of the same family found themselves on opposite sides of a trademark rectification proceeding, each claiming rightful use of the 'Black Diamond' mark in their respective businesses. What began as a shared family enterprise had fractured, and the battleground shifted to the Registrar of Trade Marks in Mumbai. As the proceedings unfolded, one party failed to file its evidence affidavit within the prescribed timeline under Rule 45 of the Trade Marks Rules, 2017. By the time the question of extension came before the authorities, more than three years had elapsed since the original deadline. The Registrar's order granting the extension was challenged, setting the stage for a critical judicial examination of whether Rule 45 was a hard-and-fast mandatory rule or a flexible directory provision.

The petitioner, Black Diamond Motors Pvt Ltd, argued that the delay of over three years in filing the evidence affidavit was inexcusable and that Rule 45 of the Trade Marks Rules, 2017 imposed a strict, mandatory deadline that could not be casually extended. They leaned on observations from earlier decisions, including those in Sun Pharma and Mahesh Gupta, to argue that procedural timelines must be respected and enforced strictly. On the other side, the respondent contended that the delay, while lengthy, warranted consideration on the merits, and that rigid enforcement of procedural rules would defeat the ends of justice. The core legal friction was simple but profound: Is Rule 45 a mandatory provision whose breach is fatal, or is it a directory provision that allows courts to extend timelines when justice demands it?

The Bombay High Court upheld the order granting the extension of time, delivering a decisive ruling that Rule 45 of the Trade Marks Rules, 2017 is directory in nature, not mandatory. The court placed heavy reliance on the judgment of the Intellectual Property Appellate Board in Sahil Kohli, which had articulated a principle that procedural provisions in subordinate legislation must serve as a servant of justice delivery and cannot become a 'tyrant' that rules over and curtails substantive rights. The court further clarified that the observations made in Sun Pharma and Mahesh Gupta did not constitute the ratio decidendi necessary to interpret Rule 45 of the 2017 Rules. By drawing this distinction, the court ensured that the door to justice remained open, even after a delay exceeding three years. The outcome favored the defendant, with the extension of time to file the evidence affidavit standing upheld.

For founders, startup leaders, and IP professionals, this case carries a vital lesson: procedural deadlines in trademark and IP proceedings are not iron curtains. While timely compliance is always the best practice, courts retain the discretion to extend timelines when substantive rights are at stake. The key takeaway is that procedural rules in subordinate legislation are designed to facilitate justice, not to obstruct it. If you find yourself facing a delay in an IP proceeding, do not assume the battle is lost. Understand the distinction between directory and mandatory provisions, build a strong case for why an extension serves the interests of justice, and remember that courts may look beyond the calendar to protect substantive rights. Conversely, if you are the party opposing an extension, recognize that the burden of showing prejudice from