Is Filing Evidence Under Rule 45 and Rule 46 Mandatory or Directory in Trademark Oppositions in India?

Introduction

Few questions in Indian trademark practice have travelled as long and uncertain a road as a deceptively simple one. If an opponent, or an applicant, misses the deadline for filing evidence in an opposition, is the case really over, or can the Registrar still be persuaded to take the evidence on record? Put in the language of statutory interpretation, is the evidence timeline mandatory or directory?

The answer matters to everyone who touches a trademark file. For a brand owner who has spent years building goodwill, a missed evidence deadline can mean watching a confusingly similar mark proceed to registration. For an applicant, a default at the evidence stage can derail an application that was otherwise sound. And for the attorneys advising them, the gap between "mandatory" and "directory" is the gap between a closed door and a second chance.

For a long time the working assumption, at least in Delhi, was that the modern Rules had made these deadlines strict and self-executing. That assumption is now genuinely contested. As of 2026 there is a clear, reasoned divergence between the High Courts on the very same provision. The Delhi High Court reads the 2017 timeline as a hard, mandatory ceiling. The Bombay High Court, in a detailed judgment in Black Diamond Motors, has held it to be directory; the Madras High Court, across Kangaro Industries and ACE Foods, has substantially aligned with that directory-leaning approach by confining the deemed-abandonment consequence to the evidence stage; and the erstwhile Intellectual Property Appellate Board (IPAB) had earlier reached the same conclusion in Sahil Kohli. The result is one of those rare moments where a practitioner can, in good faith, argue the question either way, depending on the bench, the rule and the facts.

This article traces the complete evolution of the issue across the three regimes that have governed trademark opposition evidence in India: the Trade and Merchandise Marks Rules, 1959 (Rule 53), the Trade Marks Rules, 2002 (Rules 50 to 53), and the Trade Marks Rules, 2017 (Rules 45 to 48). It begins with the Full Bench in Hastimal Jain, follows the sharp split under the 2002 Rules, examines how the courts have handled the transition to the 2017 Rules, and arrives at the recent decisions from Delhi, Madras and Bombay that now shape day-to-day practice. The picture that emerges is neither uniformly strict nor uniformly forgiving. Two themes run through all of it: the courts are taking timelines seriously, and yet the harshest consequence, the death of the whole proceeding, is increasingly being read down so that a missed deadline costs a party its evidence rather than its case.

1. The statutory framework

1.1 Section 21 of the Trade Marks Act, 1999

Opposition proceedings are built around Section 21 of the Trade Marks Act, 1999. Once a mark is advertised in the Trade Marks Journal, any person may oppose it within the prescribed window by filing a notice of opposition. Under Section 21(2), the Registrar serves a copy of that notice on the applicant, who must file a counter-statement within two months from the receipt of the notice, failing which the application is deemed abandoned. Under Section 21(3), the counter-statement is in turn served by the Registrar on the opponent. Section 21(4) then provides, in broad terms, that any evidence on which the opponent and the applicant rely is to be submitted in the prescribed manner and within the prescribed time.

The drafting choice that drives the whole debate sits here. Section 21(2) fixes both a time limit and a consequence, deemed abandonment, for the counter-statement. Section 21(4), by contrast, leaves the time for filing evidence to be "prescribed," that is, to be fixed by the Rules. The mandatory-versus-directory question has therefore played out almost entirely at the level of subordinate legislation, with the Act's general power to extend time, Section 131 (formerly Section 101 of the 1958 Act), hovering in the background.

1.2 The three sets of Rules

Trade and Merchandise Marks Rules, 1959, Rule 53. The opponent had two months from service of the counter-statement either to leave evidence by affidavit with the Registrar or to intimate that it would rely on the notice of opposition. Crucially, Rule 53(2) provided that an opponent who took no action would, "unless the Registrar otherwise directs," be deemed to have abandoned the opposition. Those five words gave the Registrar an express discretion. Rule 106, read with Section 101, allowed extensions of time even after expiry.

Trade Marks Rules, 2002, Rules 50 to 53. Rule 50 dealt with evidence in support of opposition, Rule 51 with evidence in support of the application, Rule 52 with evidence in reply, and Rule 53 with further evidence at the Registrar's discretion. Two changes proved decisive. First, Rule 50(1) capped any extension at "one month in the aggregate." Second, the saving words "unless the Registrar otherwise directs" were dropped from Rule 50(2), which now simply said that an opponent who took no action would be deemed to have abandoned the opposition. Rule 105, read with Section 131, remained the general extension provision, but it was expressly "subject to" specific maximum time limits.

Trade Marks Rules, 2017, Rules 45 to 48. Rule 45 governs evidence in support of opposition, Rule 46 evidence in support of the application, Rule 47 evidence in reply, and Rule 48 further evidence at the Registrar's discretion. The 2017 Rules retained the two-month period and the deemed-abandonment consequence, but went a step further by removing the one-month extension that the 2002 Rules had allowed at this stage. They also expressly require the party filing evidence to deliver copies to the other side and to intimate the Registrar of such delivery. Rule 109, read with Section 131, is the residual extension provision. Rule 48 preserves a discretion in the Registrar to allow either side to lead further evidence "upon such terms as to costs or otherwise as he may think fit," a provision that has become central to the most recent reasoning, as we shall see.

1.3 The three stages of evidence

Stripped to essentials, an opposition has three evidence stages:

• Opponent's evidence in support of opposition (Rule 53, 1959; Rule 50, 2002; Rule 45, 2017). The opponent must file an evidence affidavit, or a letter of reliance, within two months of receiving the counter-statement.
• Applicant's evidence in support of the application (Rule 51, 2002; Rule 46, 2017). The applicant has two months from receipt of the opponent's evidence, or intimation, to do the same.
• Opponent's evidence in reply (Rule 52, 2002; Rule 47, 2017). This is optional, within one month.

The same scheme applies, with the necessary modifications, to rectification or cancellation proceedings under Section 57. Rule 98 of the 2017 Rules channels a contested rectification into the evidence machinery of Rules 45 to 51, so the mandatory-or-directory question reaches well beyond oppositions.

1.4 The practical questions

The interpretive battle turns on a handful of practical questions. The current answers, developed in the sections that follow, can be previewed at the outset:

• Is the opposition deemed abandoned if the opponent does not file Rule 45 evidence? On the Delhi view, yes, by operation of the rule itself. On the Bombay view in Black Diamond Motors, the deeming fiction is confined to the evidence and does not destroy the opposition.
• Does the application simply proceed if the applicant does not file Rule 46 evidence? Largely yes. Rule 46(2) does speak of deemed abandonment of the application, but the Madras High Court in ACE Foods and the Bombay High Court in Black Diamond Motors have read that consequence down.
• Can late evidence be taken on record? This is precisely where the courts now diverge. Delhi says no, absent proper service issues. Bombay says yes, in the Registrar's discretion, with costs. Madras occupies a middle position: stricter than Bombay on whether the clock can be stretched, but unwilling to let a missed deadline extinguish the proceeding.
• Can delay be condoned under Section 131? Under the 1959 Rules, comfortably. Under the 2002 and 2017 Rules, the dominant Delhi view says no. Bombay, in Black Diamond Motors, says yes, and even after the deadline has passed.
• Is service of the counter-statement a condition precedent for time to begin? Yes, on every view. This has become the single most reliable escape route for a diligent party.

2. The foundation: Hastimal Jain and the directory view under the 1959 Rules

The story begins with the Full Bench of the Delhi High Court in Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks (2000 PTC 24 (Del) (FB); judgment dated 8 December 1999). The facts were unremarkable. An opponent had not filed evidence within the two-month window under Rule 53(1) of the 1959 Rules, no extension had been sought before expiry, and the Registrar had treated the opposition as abandoned.

The Full Bench, speaking through Variava, CJ, held that Rule 53(2) was directory, not mandatory. Its reasoning rested on three pillars. First, the rule itself preserved a discretion through the words "unless the Registrar otherwise directs," signalling that the legislature never intended a rigid, self-executing bar. Second, Section 101 of the 1958 Act and Rule 106 of the 1959 Rules empowered the Registrar to extend time even after expiry, so reading Rule 53(2) as an absolute bar would negate those provisions. Third, procedural rules of this kind exist to advance, not defeat, the adjudication of substantive rights. In reaching that conclusion the Full Bench approved the earlier Bombay view in K.T. Jobanputra v. Registrar of Trade Marks (1981 IPLR 93), where Pendse, J had likewise held Rule 53(2) to be directory.

Hastimal Jain became the bedrock for the broader argument that evidence timelines should never be applied mechanically. But its reasoning carried within it the seed of its own later confinement. Because the Full Bench leaned so heavily on the phrase "unless the Registrar otherwise directs," the moment that phrase disappeared from the rule book, the ground beneath Hastimal Jain shifted. As later courts would observe, the case remains authoritative for the 1959 regime, but its central premise does not automatically survive into a regime that deliberately deleted the Registrar's discretion. Whether the principle revives under the 2017 Rules, which in some respects resemble the 1959 framework, is the live question that the rest of this article tracks.

3. The 2002 Rules: a genuine split between the High Courts

The 2002 Rules produced the most contested phase of this story, and it would be a mistake to present the position under them as settled. Different courts genuinely took different views, and the disagreement still surfaces today whenever an old file falls to be decided.

3.1 The Delhi High Court: Rule 50 is mandatory (Sunrider)

The leading mandatory authority is Sunrider Corporation, USA v. Hindustan Lever Ltd. (2007 SCC OnLine Del 1018; 2007 (35) PTC 388 (Del)), decided by Badar Durrez Ahmed, J on 27 July 2007. (The decision appears in some records as "Surinder Corporation.") The dispute concerned the mark SUNERGY.

The Court held Rule 50 to be mandatory and drew two pointed distinctions from the 1959 regime. Rule 50(1) capped extension at "one month in the aggregate," a ceiling absent from Rule 53. And Rule 50(2) had consciously dropped the words "unless the Registrar otherwise directs," removing the very discretion on which Hastimal Jain had turned. The legislative purpose, the Court reasoned, was to cut down delay in the registration process. Accordingly, the Registrar had no power to extend beyond the aggregate of three months, and non-filing within time meant the opposition stood deemed abandoned. Rule 105 could not be pressed into service to defeat a specific maximum.

3.2 The Gujarat High Court: Rule 50 is directory (Wyeth)

The Gujarat High Court took the opposite path in Wyeth Holdings Corporation v. Controller General of Patents, Designs and Trade Marks (2006 SCC OnLine Guj 620; 2007 (34) PTC 1 (Guj)). Applying the Supreme Court's approach in Salem Advocate Bar Association v. Union of India, the Court accepted that "shall" need not always be mandatory and must be read in context. Because subordinate legislation cannot travel beyond Section 131, which permits extensions, the Court reasoned that it faced a choice between striking Rule 50(2) down as ultra vires or reading it harmoniously as directory, and it chose the latter. For a period, the Trade Marks Manual itself directed officers to treat Rule 50 as directory, which reflected how unsettled the question was even at the administrative level.

3.3 The IPAB: discretion recognised, then narrowed

The IPAB's position evolved. In early decisions such as Asian Paints Ltd. v. Assistant Registrar the Board treated the Registrar as competent to extend time even beyond Rule 50, a directory-leaning stance that Sunrider effectively displaced for the Delhi jurisdiction. The deeper relationship between the Act's extension power and the Rules' deemed-abandonment language would resurface, under the 2017 Rules, in Sahil Kohli, discussed below.

3.4 The takeaway from the 2002 era

For practitioners, the honest description of the 2002-Rules position is that it was divided: mandatory in Delhi, directory in Gujarat, with the IPAB shifting over time. The Delhi view ultimately gained the upper hand and has been reaffirmed repeatedly. But the divergence was real, and it explains why an opponent caught by an old 2002-Rules order will still argue Wyeth while the applicant relies on Sunrider.

4. The transition from the 2002 Rules to the 2017 Rules

The 2017 Rules came into force on 6 March 2017 and repealed the 2002 Rules. Because oppositions routinely span a decade or more, a large number of files straddle the two regimes, and a critical question arose: which set of rules governs a proceeding that began under the 2002 Rules but is decided after 2017?

The conflict crystallised within the Delhi High Court itself. In Mahesh Gupta v. Registrar of Trademarks (2023 SCC OnLine Del 1324), a Single Judge (C. Hari Shankar, J) held that where every relevant step had occurred under the 2002 Rules, the saving clause in Rule 158 of the 2017 Rules preserved those steps, so the matter had to be decided under Rule 50 of the 2002 Rules, not Rule 45 of the 2017 Rules. Shortly afterwards, in SAP SE v. Swiss Auto Products (C.A.(COMM.IPD-TM) 130/2021; order dated 3 July 2023), another Single Judge (Sanjeev Narula, J) doubted that approach. Reasoning that timelines for filing evidence are procedural, and that procedural amendments are presumed to operate retrospectively, the Court took the prima facie view that the 2017 Rules apply to ongoing 2002 proceedings, and that Rules 45 and 46 in fact return the position to something resembling the 1959 framework, reviving Hastimal Jain. Faced with this conflict, the Court referred the question to a larger Bench.

The Division Bench answered in Mahesh Gupta and Ors. v. Registrar of Trademarks (2024 SCC OnLine Del 1750; LPA 429/2023; decided 13 March 2024 by Yashwant Varma and Dharmesh Sharma, JJ). Its conclusions are now the most authoritative word on the transition. The Bench held that the 2017 Rules do not disturb proceedings initiated before they came into force, and that liabilities or consequences incurred under the 2002 regime remain unaffected. It further held that failure to file evidence in support of an application falls within "anything done under the 2002 Rules" preserved by Rule 158, and so continues to be governed by the 2002 Rules. In substance, the Division Bench endorsed the Mahesh Gupta Single Judge line and disagreed with SAP SE on retrospectivity. The larger-bench reference flagged in SAP SE nonetheless means the last word on retrospectivity has arguably not been spoken.

The practical rule of thumb that follows is straightforward. In a pending old matter, first identify whether the relevant steps occurred under the 2002 Rules. If they did, the 2002 Rules, and the Sunrider and Mahesh Gupta mandatory reading, govern. Only proceedings genuinely commenced under the 2017 Rules are governed by Rules 45 to 48.

5. The 2017 Rules: Rules 45, 46, 47 and 48

5.1 The text and its consequence

Rule 45 requires the opponent, within two months of service of the counter-statement, either to leave evidence by affidavit with the Registrar or to intimate reliance on the notice of opposition, and to deliver copies to the applicant. Rule 45(2) provides that an opponent who takes no action within time is deemed to have abandoned the opposition. Rule 46 mirrors this for the applicant's evidence, with Rule 46(2) providing for deemed abandonment of the application. Rule 47 deals with reply evidence. The defining change from 2002 is the deletion of the one-month extension: the 2017 Rules say nothing about extensions at the evidence stage itself.

What the 2017 Rules retain, and what has become decisive in the latest reasoning, is Rule 48. It provides that no further evidence shall be left on either side, but that the Registrar may, at any time and if he thinks fit, give leave to either party to lead further evidence on such terms as to costs as he considers appropriate. This residual discretion is the hinge on which the most recent Bombay decision turns.

5.2 Is there any power to condone delay? The competing answers

This is the heart of the modern controversy, and there is no single answer at present.

The strict view. The dominant Delhi position, crystallised in Sun Pharma (Section 6), is that the Registrar has no discretion to extend the evidence timeline under Rule 45 or Rule 46, or under the residual provisions in Rules 101 and 109. The reasoning runs that the removal of the discretionary words, coupled with the deletion of the extension period, signals a clear legislative intent to impose strict, self-executing timelines. One Madras judge, in Rolls-Royce, has expressly agreed with this Delhi line, though, as Section 7 explains, the broader Madras trend has moved the other way.

The discretionary view. The IPAB in Sahil Kohli v. Registrar of Trade Mark (2018 SCC OnLine IPAB 55) took the opposite analytical route. It reasoned that, precisely because the 2017 Rules dropped the express extension language that the 2002 Rules had contained, one must fall back on Section 131, the parent provision that allows the Registrar to extend time for any act not expressly time-bound by the Act itself. On that logic, removing the words from Rule 45 cannot have removed a power that lives in the statute. To read Rule 45(2) as wholly inflexible, the Board held, would render Section 131 otiose. The Bombay High Court has now expressly adopted this reasoning in Black Diamond Motors (Section 8).

It is worth stressing that Sahil Kohli still upheld the abandonment on its own facts. The opponent there had filed no Section 131 application in the prescribed manner, and the courier receipts produced to prove timely dispatch were found to be fabricated, with an FIR lodged. Sahil Kohli therefore recognises a residual discretion that must be properly and promptly invoked, not a roving power to rescue the inattentive.

5.3 Late evidence, interlocutory petitions and further evidence

Whichever view ultimately prevails, the safe practical route to bring evidence late, or to explain a delay, is an interlocutory petition, typically on Form TM-M, invoking Section 131 read with Rule 109, filed promptly. As Sahil Kohli and V-Guard show, the existence and timing of such a petition can be decisive. A petition filed years later, as in IBM v. Tivoli Gardens, will struggle in Delhi, even though the Bombay High Court in Black Diamond Motors has held that a Section 131 application can be entertained even after the deadline has passed. Rule 48 further evidence remains available in principle, and in Black Diamond Motors it did real work, but in the strict jurisdictions it is not treated as a backdoor to cure a missed primary deadline.

5.4 Email service and proof of receipt

Since 2017 the Registry serves notices and documents largely by email, and this has generated a distinct and important line of authority. Rule 18(2) of the 2017 Rules contains a legal fiction deeming a document served "at the time of sending the e-mail." As the Madras and Bombay decisions in Sections 7 and 8 show, the courts have refused to read that fiction so literally as to override the statutory requirement of actual receipt, because email dispatch is notoriously unreliable. Proof that an email was transmitted is not proof that it was received, and limitation does not run until receipt is established.

6. The Delhi High Court: the strict line and its limits

6.1 Sun Pharma Laboratories Ltd. v. Dabur India Ltd.: mandatory, but service is not the same as filing

The most cited recent decision is Sun Pharma Laboratories Ltd. v. Dabur India Ltd. (2024:DHC:946, also reported as 2024 SCC OnLine Del 813; C.A.(COMM.IPD-TM) 146/2022; decided 9 February 2024 by Prathiba M. Singh, J). Sun Pharma, proprietor of GLUCORED, had opposed Dabur's GLUCORID-formative mark. The counter-statement was served in June 2007. Sun Pharma filed its evidence with the Registry within time but served it on Dabur a few days late. After an extraordinary gap, the Registrar in 2022 deemed the opposition abandoned.

The Court's analysis repays close attention because it does two things at once. On the timeline question, it held firmly that the periods in Rule 50 of the 2002 Rules, and Rule 45 of the 2017 Rules, are mandatory and non-extendible. The use of "one month aggregate" and the deletion of the discretionary words point to a strict limit, and the Registrar has no power under Rule 50 or Rule 45, or under Rules 101 and 109, to extend it. The two-month period runs from the opponent's receipt of the counter-statement.

On the facts, however, the Court drew a vital distinction between filing and service. Under the 2002 scheme, the obligation to serve evidence on the other side lay with the Registry, not the opponent. Since Sun Pharma had filed its evidence within time, a mere delay in its service on Dabur could not render the opposition abandoned. The Court reinstated the opposition and directed the Registrar to decide it on merits. The lesson is precise: timeliness is judged by filing, and a defect in the service of evidence will not, by itself, kill a timely opposition.

6.2 Mahesh Gupta (Single Judge and Division Bench)

Mahesh Gupta has been discussed in Sections 3 and 4. To recap its contribution to the current position: the Single Judge reaffirmed that Rule 50 of the 2002 Rules is mandatory, rejecting Wyeth as impermissibly re-writing the rule, and held that 2002 proceedings are governed by the 2002 Rules. The Division Bench settled the transition question by holding that the 2017 Rules do not apply retrospectively to proceedings begun under the 2002 Rules. Both tiers are, in tone and result, firmly in the strict camp.

6.3 Aman Engineering Works v. Registrar of Trade Marks: the outer-limit logic

A useful piece of the Delhi reasoning, often cited in support of the strict line, is Aman Engineering Works v. Registrar of Trade Marks (2022/DHC/004701, also reported as 2022 SCC OnLine Del 3666; decided 4 November 2022). Strictly, that case concerned Rule 119, on review applications, rather than Rule 45. It held that the Registrar has no power to condone delay in filing a review beyond the outer limit prescribed, applying the Supreme Court's strict-limitation jurisprudence. It is invoked in Mahesh Gupta and Sun Pharma as part of the broader proposition that where the Rules fix an outer limit, the Registrar cannot travel beyond it. Read it as supporting the mandatory reasoning by analogy, not as a direct authority on the evidence stage.

6.4 V-Guard Industries Ltd. v. Registrar of Trade Marks: the opponent-friendly reading of Rule 45

A genuine counterpoint within Delhi is V-Guard Industries Ltd. v. Registrar of Trade Marks (2023/DHC/000137; C.A.(COMM.IPD-TM) 39/2022; decided 6 January 2023 by C. Hari Shankar, J), where V-Guard was the opponent. Its evidence reached the Registry about three days late, after the Registry website had been non-functional on the due date, and the opponent had in fact filed a Form TM-M extension application that the Deputy Registrar never considered. The Court held the abandonment order incorrect, noting that Rule 45(1) speaks of leaving evidence "with the Registrar," not of "filing" it, that the rule is poorly worded, that ambiguity must benefit the citizen, and that the right to oppose is as sacrosanct as the right to seek registration. The opposition was revived. V-Guard shows that, even within the strict paradigm, a diligent opponent who has tried to comply and has moved promptly will often be heard.

6.5 IBM Corporation v. Tivoli Gardens: the other side of the service coin

The most recent Delhi decision, International Business Machines Corporation v. Tivoli Gardens (C.A.(COMM.IPD-TM) 45/2025; decided 28 February 2026), supplies the mirror image of Coaster Shoes (Section 7). Here the Assistant Registrar had revived the opponent's opposition to IBM's TIVOLI mark, and IBM challenged that revival. The Court held that under Rule 45 the two-month period is the maximum, on the expiry of which the opposition stands deemed abandoned by operation of law. On service, it found that the counter-statement had been properly dispatched to the opponent's registered agent and counsel, and that service is sufficient where a letter is properly addressed and posted. A litigant owes a duty to be vigilant and cannot escape the consequences of inaction by blaming its former counsel, and the interlocutory petition had come after a delay of over two years, which the Registrar had no jurisdiction to condone. The revival order was quashed. The message for opponents is sobering: where service is proved and the default is your own, the deeming will bite, and a stale opposition will not be resurrected.

7. The Madras High Court: substance, service and a directory-leaning approach

The Madras High Court has approached the problem through two related lenses: the requirement of actual receipt before time can run, and a reluctance to let a missed evidence deadline destroy the underlying proceeding. Taken together, its recent decisions place Madras substantially on the directory-leaning side of the divide, alongside Bombay and the IPAB, even though one of its judges has agreed with the Delhi strict line on the narrower question of whether the clock can be stretched. The result is a court that protects defaulting parties more readily than Delhi, while remaining more cautious than Bombay about extension as such.

7.1 Ramya S. Moorthy v. Registrar of Trade Marks

In Ramya S. Moorthy v. Registrar of Trade Marks (2023 SCC OnLine Mad 5305; W.P.(IPD) Nos. 3 and 4 of 2023; decided 10 August 2023 by Senthilkumar Ramamoorthy, J), the applicant's NIMAYA marks had been deemed abandoned for failure to file counter-statements to oppositions by Nirma Ltd. The Registry relied on an email transmission record marked "success" to show service of the notices of opposition. The Court held that Rule 18(2)'s deeming fiction cannot override Section 21(2), under which the counter-statement clock runs from the receipt by the applicant of the notice. A transmission record does not prove receipt, particularly where a substantive right to registration is at stake. The abandonment orders were quashed. Although Ramya S. Moorthy concerns the counter-statement stage rather than the evidence stage, its logic on email service and proof of receipt applies with equal force across the opposition timeline.

7.2 Kangaro Industries v. V-Guard Industries: deemed abandonment confined to the evidence

The decision most directly on the evidence stage is Kangaro Industries (Regd.) v. V-Guard Industries (2025:MHC:2131; (T)CMA(TM) No. 193 of 2023; decided 21 August 2025 by Senthilkumar Ramamoorthy, J), an appeal by the opponent arising from an opposition in Class 16. The facts repay attention. The opponent received the counter-statement on 5 August 2017, filed a Form TM-M seeking an extension on 23 September 2017 (within the two-month window), and filed its evidence on 18 October 2017, after the two-month period had expired on 5 October 2017. The Registrar refused the extension and held the opposition deemed abandoned under Rule 45(2). The High Court set that order aside.

On the extension question, the Court did not hold that the timeline is unextendible. It held the opposite. An application under Section 131 to extend the Rule 45(1) period is maintainable, because the two-month period is fixed by the Rules and is not a time "expressly provided in the Act," so it falls within Section 131 rather than outside it. That power is, however, curtailed by Rule 109(2), which caps any such extension at one month. The practical result, in the Court's own words, is that the opponent is left in the same position as under Rule 50 of the 2002 Rules: an extension is available, but only up to one month, and only on sufficient cause. The same one-month ceiling applies to extensions of the Rule 46 and Rule 47 periods. The only sense in which the timeline is treated as firm, then, is the one-month cap; it is not a hard, unextendible bar of the kind the Delhi High Court describes.

The evidence in this case survived, but not because an extension was granted. The Court reasoned that because the opponent had filed its extension request within the two months, that act was itself "action under sub-rule (1)" of Rule 45, so the deeming fiction in Rule 45(2), which bites only where the opponent "takes no action" within the time, was never triggered. A legal fiction, the Court held, must be confined to its object and purpose, which is to deal with an opponent who lodges an opposition and then does nothing; an opponent who applied for time in the window, then filed evidence, then filed reply evidence, is simply not the defaulting party the fiction targets. The opposition therefore stood, and the Court set aside the order and remanded the matter for a decision on merits, rather than itself admitting the late evidence onto the record.

Two features of the decision place it on the directory-leaning side of the divide. The first is the confinement of the deeming fiction: a missed deadline is not allowed to extinguish an opposition that has otherwise been actively prosecuted, which is the antithesis of the full-blooded mandatory consequence that Delhi applies in Sun Pharma and IBM v. Tivoli, where the opposition collapses by operation of law. The second is the affirmation, contrary to the Delhi view, that the Registrar retains a power under Section 131 to extend the evidence timelines at all, albeit capped at one month. Where Kangaro remains stricter than Bombay is precisely that cap: in Black Diamond Motors the Bombay High Court treats the period as directory and the extension as available even long after expiry, whereas Kangaro holds the opponent to the one-month ceiling that Rule 109(2) prescribes. Read alongside ACE Foods, Kangaro shows a Madras court that takes the timeline seriously while declining to treat its breach as fatal.

7.3 ACE Foods: reading the abandonment consequence down

The directory-leaning character of the Madras approach is clearest in ACE Foods (P) Ltd. v. Registrar of Trade Marks Office (CMA(TM) No. 22 of 2025; decided 10 February 2026 by N. Anand Venkatesh, J). The applicant, opposed in respect of its MODERN KITCHENS mark, had filed an unsigned evidence affidavit within time during the COVID-19 lockdown, and later sought to substitute a properly attested version. The Registrar declared the application abandoned under Rule 46(2). The Court held that, to the extent Rule 46(2) provides for deemed abandonment of the application, it travels beyond Section 21(4), which contains no such consequence, and must be read down so that non-compliance results only in the loss of the right to lead that evidence, not the destruction of the application. The affidavit was treated as filed on time and the matter was remitted for a decision on merits.

ACE Foods matters because it confirms the substance of the Madras position. A rule whose breach carries no fatal consequence is, in practical effect, behaving in a directory way, whatever label is attached to the timeline. The same structural reasoning, that the deeming fiction cannot be allowed to extinguish substantive rights conferred by the Act, is precisely what the Bombay High Court adopts in Black Diamond Motors, which is why the two decisions belong together. On this view ACE Foods and Kangaro sit on the directory-leaning side of the line, in company with Sahil Kohli and Black Diamond Motors, rather than with the Delhi strict authorities.

7.4 The outlier: Rolls-Royce PLC v. Union of India

The one recent Madras decision that genuinely sits on the strict side is Rolls-Royce PLC v. Union of India (W.P. No. 25070 of 2018; decided 8 October 2025 by M. Dhandapani, J). The Court framed the issue as whether Rule 45 and Rule 50 are directory or mandatory, reviewed both the Gujarat directory line and the Delhi mandatory line, and recorded its respectful agreement with the Delhi High Court. It followed Mahesh Gupta, quoting the observation that the Wyeth approach, if accepted, would amount to no less than a re-writing of the statutory provisions, and endorsed Sun Pharma's holding that the Registrar has no discretion under Rule 50 of the 2002 Rules, or Rule 45 of the 2017 Rules, or Rules 101 and 109, to extend the period. (This Rolls-Royce matter is distinct from the well-known infringement litigation over the RR badge, and should not be confused with it.)

Rolls-Royce is a reminder that Madras is not monolithic. It sits apart from Kangaro and ACE Foods on both of the questions that matter. On the consequence question, it does not engage in the confinement of the deeming fiction that those decisions undertake. And on the extension question, it endorses the Delhi position that there is no power to extend at all, which is the very proposition that Kangaro declined to accept when it held that a Section 131 extension, capped at one month, remains available. An opponent relying on the directory-leaning characterisation of Madras should therefore be candid that Rolls-Royce points the other way, and should be ready to distinguish it as a decision that follows the Delhi line rather than the more recent reasoning of Kangaro.

8. The Bombay High Court: two decisions pulling in complementary directions

The Bombay High Court now offers two important decisions: one on service, and one, very recent, that squarely holds the Rule 45 deadline to be directory.

8.1 Coaster Shoes Company Pvt. Ltd. v. Registrar of Trade Marks: no service, no commencement of time

In Coaster Shoes Company Pvt. Ltd. v. Registrar of Trade Marks (2024:BHC-OS:13607; Commercial Miscellaneous Petition (L) No. 4309 of 2023; decided 16 August 2024 by R.I. Chagla, J), the Registrar had abandoned the opposition for non-filing of evidence under Rule 50(2) of the 2002 Rules, asserting that the counter-statement had been served on the opponent's former attorney years earlier. The opponent maintained that the counter-statement had never been received; it had been uploaded on the Registry website but not served. An RTI reply from the Registry recorded that no proof of service was found in the available record. The opponent had in fact chased the counter-statement repeatedly and, as a precaution, had filed its evidence in 2018.

The Court held that Section 21(3) casts a duty on the Registrar to serve the counter-statement on the opponent, and that mere dispatch, or uploading on the website, is not service. The two-month period for filing evidence cannot begin to run until the counter-statement is properly served and received. Since service was not proved, the opposition could not be deemed abandoned. The order was set aside and the opposition revived. (The mark in question was TRAVEL FOX.)

Coaster Shoes is the clearest articulation of what might be called the "the time never began" template. On its own terms it did not decide whether the timeline is mandatory or directory; it located the opponent's protection upstream, in the absence of service. The Court was plainly influenced by the opponent's diligence, and, as IBM v. Tivoli shows, where service is proved the result is the opposite.

8.2 Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks: Rule 45 is directory

The most significant recent development is Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks (Commercial Miscellaneous Petition No. 23 of 2026; decided 17 June 2026 by Somasekhar Sundaresan, J). It is, on the available material, the first decision of the Bombay High Court to interpret Rule 45 of the 2017 Rules directly on the question of whether its deadline is mandatory or directory, and it holds that the deadline is directory.

The setting. The dispute is the trademark limb of a long family war over the "Black Diamond" name. Black Diamond Motors Pvt. Ltd., the registrant of a Class 12 mark, faced a rectification petition under Section 57 brought by Black Diamond Track Parts Pvt. Ltd. In the course of those rectification proceedings, the Registrar permitted the Rectification Applicant to bring an evidence affidavit on record under Rule 45, read with Rule 98, despite a delay of more than three years, invoking Section 131. The registrant, who wanted the late evidence shut out, appealed and argued that the Rule 45 deadline is mandatory. In other words, the party resisting the indulgence argued "mandatory," and the party who had filed late argued "directory," a neat illustration of how this question is always litigated by whichever side it suits.

The core holding on Rule 45. The Court held that the two-month period in Rule 45 is a directory, administrative timeline, not a mandatory limitation period. Its central reason was structural. Read in the context of Rules 46 to 48, and in particular Rule 48, which confers on the Registrar a discretion to permit further evidence on terms as to costs, it would be incoherent to treat Rule 45 as an absolute, case-ending bar. If a party could in any event seek to bring evidence in under Rule 48, then reading Rule 45 as a guillotine produces an absurd and avoidable result. The Court pointedly observed that neither Sun Pharma nor Mahesh Gupta had grappled with Rule 48, and that the earlier decisions on the 2002 and 1959 Rules had treated those provisions as directory in part because of discretionary language that the 2017 Rules relocate rather than abolish.

Confining the deeming fiction. The Court held that the deemed-abandonment fictions in Rule 45(2) and Rule 46(2) must be confined to their purpose. They operate to mark the consequence of not filing evidence within time, but they cannot be stretched to wipe out the underlying opposition or application, which rest on substantive rights conferred by Sections 21 and 57 of the Act. To hold otherwise would mean that the entire proceeding could collapse on a missed evidence date even though the merits had been fully pleaded and even though further evidence could still come in under Rule 48. This reasoning runs parallel to the Madras position in ACE Foods, and takes it further by applying it to the opponent's side as well.

Section 131 and Rule 109. The Court then addressed the extension power directly, and disagreed with the Delhi reasoning on three points:

1. A time limit prescribed by the Rules is not a time "expressly provided in this Act." It therefore falls within, not outside, the Registrar's power under Section 131 to extend time. The contrary view, that no time stipulated in the Rules can ever be extended under Section 131, the Court held, conflates the force of law that the Rules carry with the narrow class of deadlines that the Act itself fixes.
2. A Section 131 application can be filed, and granted, even after the deadline has expired. Section 131 contains no implied limitation period for making the application. Drawing on the Supreme Court's decision in Rohan Builders (India) Pvt. Ltd. v. Berger Paints (India) Ltd. on the analogous language of Section 29A of the Arbitration and Conciliation Act, the Court declined to read in a bar that the legislature had not enacted.
3. The one-month cap in Rule 109(2) runs from the date of the order granting the extension, not from the original deadline. So the fact that the Rectification Applicant moved years late did not breach the one-month limit, because, once the application was allowed, the evidence came on record at once and no further month was even needed.

A procedural sting. The Court added that an order merely granting an extension of time under Section 131 is a ministerial act, against which no appeal lies by virtue of Section 131(2). The registrant's appeal therefore failed on two independent grounds: Rule 45 is directory, and the order under challenge was in any event not appealable.

A policy distinction worth noting. The Court was careful to observe that the matter arose in rectification rather than opposition, and that the delay-in-registration concern that had animated Sun Pharma does not apply in the same way to rectification, where the registrant already enjoys the benefits of registration. The ratio on the character of Rule 45 is, however, general, and the Court expressly preferred the IPAB's reasoning in Sahil Kohli, and disagreed with Sun Pharma, Mahesh Gupta and the Madras decisions that had followed them.

The upshot is that, on the very same Rule 45, there are now two carefully reasoned and opposed lines at the High Court level. That divergence is unlikely to be resolved short of the Supreme Court or a larger bench, and until then the answer a practitioner gets may depend on where the file is heard.

9. Rule 45 and Rule 46 analysed separately

It is tempting, but inaccurate, to treat Rule 45 and Rule 46 as identical twins. They share a structure, but the consequences of default differ in degree, and the case law does not always equate them.

Rule 45, the opponent's evidence. If the opponent fails to file evidence, or a letter of reliance, within two months, the immediate textual consequence under Rule 45(2) is that the entire opposition is deemed abandoned and the application proceeds. On the Delhi view, that consequence is real and close to fatal (Sun Pharma, IBM v. Tivoli). On the Bombay view in Black Diamond Motors, the deeming is confined to the evidence, and the opposition survives, with further evidence still possible under Rule 48. This is the sharpest point of divergence in the current law.

Rule 46, the applicant's evidence. If the applicant fails to file evidence in support of the application, the most immediate consequence is the loss of the opportunity to put positive evidence on record; the applicant may still rely on the counter-statement and the pleadings. In SAP SE the applicant expressly stated that, if its extension request were refused, it would rely on the facts in the counter-statement, and was treated as having thereby avoided deemed abandonment. Rule 46(2) does speak of deemed abandonment of the application, but the Madras High Court in ACE Foods read that consequence down as travelling beyond Section 21(4), and the Bombay High Court in Black Diamond Motors took the same view. A further wrinkle for old matters, noted in SAP SE, is that Rule 51 of the 2002 Rules, the applicant's evidence provision, did not embody the deemed-abandonment principle in the way Rule 50 did.

Two questions, not one. The cleanest way to hold all this in mind is to separate the two questions the cases actually decide. First, can the two-month timeline be extended? Here the line is more subtle than a simple split. Delhi holds there is no power to extend at all, and Rolls-Royce in Madras agrees. Kangaro, by contrast, holds that a Section 131 extension is available but capped at one month under Rule 109(2), leaving the opponent in the same position as under the 2002 Rules, and Bombay in Black Diamond Motors goes furthest, holding the period directory and the extension available even after expiry. Second, does a missed deadline end the whole proceeding, or only forfeit the evidence? Here the weight of authority, across Kangaro, ACE Foods and Black Diamond Motors, is towards confining the deeming fiction so that a party loses its evidence rather than its case, while Delhi still treats a defaulted opposition as fully abandoned. A careful practitioner keeps these two questions distinct, because the answer to one does not dictate the answer to the other, and because Kangaro in particular answers them in a way that is easy to misread: it confines the deeming fiction and affirms an extension power, but holds that power to a one-month ceiling.

The bottom line. For an opponent, treat Rule 45 as a hard deadline whose breach can end the case, while knowing that Black Diamond Motors now offers a reasoned argument the other way. For an applicant, treat Rule 46 as a hard deadline too, but understand that the realistic worst case is usually the forfeiture of the chance to lead evidence rather than the automatic loss of the mark, with the counter-statement available as a fallback. Where the issue is genuinely live, plead, in the alternative, an intention to rely on the counter-statement, as the applicant did in SAP SE.

10. Chronological timeline of the case law

11. Court-wise comparative position

The single most important point a reader should take from this table is that the question is not settled at the level of the 2017 Rules. Delhi reads the timeline strictly and treats default as extinguishing the proceeding. Bombay, the IPAB, and now substantially the Madras High Court read the position the other way, confining the deemed-abandonment consequence to the evidence so that a missed deadline does not destroy the case, with Madras holding firm only on the narrower question of whether the clock can be stretched (and one Madras decision, Rolls-Royce, agreeing with Delhi even on that). This is a live divergence that may require resolution by the Supreme Court.

12. What should trademark owners do now?

The case law does not reward optimism about second chances. Even though Black Diamond Motors now offers a reasoned directory view, the only safe way to run a file is to assume the timelines are mandatory, while preserving the service-based and discretion-based arguments that have repeatedly saved diligent parties.

1. Opponents, file Rule 45 evidence, or a letter of reliance, within two months. Do not wait. If you do not intend to lead evidence, file the letter of reliance in time, because that itself averts deemed abandonment.
2. Applicants, track Rule 46 deadlines just as carefully. Calendar the two-month period from receipt of the opponent's evidence, and, where a delay is unavoidable, state in the alternative that you will rely on the counter-statement, the approach that assisted the applicant in SAP SE and the spirit of which underlies ACE Foods.
3. Do not assume delay will be condoned, but know the limits of each forum. In Delhi the dominant view is that the Registrar has no power to extend the evidence timeline at all, and Rolls-Royce in Madras agrees. Kangaro, however, holds that a Section 131 extension is available, though only up to one month, and Black Diamond Motors in Bombay holds the period directory and extendable even after expiry. Treat the deadline as final wherever you can, and regard the directory-leaning authorities, Black Diamond Motors, Sahil Kohli, and the consequence-limiting strand of Kangaro and ACE Foods, as arguments to deploy if you are caught, not a plan to rely on. Where you do seek an extension, file the Form TM-M within the two-month window: in Kangaro it was the in-time filing of that request, treated as action under Rule 45(1), that kept the opposition alive.
4. Keep meticulous proof of filing and of service and receipt. Retain the Registry's acknowledgment of filing, the proof of delivery to the other side, and a clear record of dates. In Sun Pharma the distinction between timely filing and late service was decisive.
5. If the counter-statement, or any notice, is not received, write to the Registry at once and preserve the correspondence. Coaster Shoes and Ramya S. Moorthy turned on the absence of proof of service and the party's diligent follow-ups. Send reminders, raise an RTI on proof of service where appropriate, and keep everything.
6. File an interlocutory petition promptly if evidence is delayed. A Form TM-M application under Section 131 read with Rule 109, filed without delay, gave the opponent in V-Guard a foothold and is the procedural vehicle that Black Diamond Motors blessed. A petition filed years later, as in IBM v. Tivoli, will struggle in the strict jurisdictions.
7. In pending old matters, first determine which Rules apply. Following the Division Bench in Mahesh Gupta, proceedings whose relevant steps occurred under the 2002 Rules remain governed by the 2002 Rules and the Sunrider mandatory reading, saved by Rule 158.
8. Where an abandonment order has been passed, scrutinise service before anything else, and consider the forum. An order abandoning an opposition can be challenged where the counter-statement was never properly served, where limitation had not commenced, or where the party acted diligently. Where the file is in Bombay, Black Diamond Motors also opens a direct directory argument and a Section 131 route even after the deadline. But do not over-rely on any of this: the courts now expect vigilance, and IBM v. Tivoli shows the door closes where service is proved and the default is the party's own.
9. Brief the divergence honestly when you advise. Because the High Courts differ, the candid advice to a client is that outcome may depend on the bench, and that the conservative course, build the file as though no extension will be granted, is the only one that holds good everywhere.

13. Conclusion

The journey from Hastimal Jain to Black Diamond Motors is, at bottom, a story about how far procedure should be allowed to defeat substance. Under the 1959 Rules the timeline was directory, anchored to an express discretion that the Registrar could use to do justice. The 2002 Rules deliberately removed that discretion and capped extensions, producing a genuine split: mandatory in Delhi, directory in Gujarat. The 2017 Rules went further still, deleting the extension altogether, and for several years the Delhi High Court's strict reading looked set to settle the matter.

It has not settled. Two developments have re-opened the question. The first is the steady recognition, in Kangaro and ACE Foods at Madras and emphatically in Black Diamond Motors at Bombay, that the deemed-abandonment fictions in Rule 45(2) and Rule 46(2) should be confined to the evidence and not allowed to extinguish proceedings that rest on substantive statutory rights. The second is the Bombay High Court's conclusion, reasoned at length, that Rule 45 is directory, that Section 131 survives the deletion of the extension words, and that an extension can be sought even after the deadline. Set against the Delhi strict line, the result is a clear, reasoned divergence at the level of the same provision, with Bombay, the IPAB and most of Madras on one side and Delhi, joined on the extension question by Rolls-Royce, on the other.

What, then, is the honest answer to the question in the title? It depends, for now, on the rule, the stage, the forum and the facts. The deadline is real, and in Delhi it will not be extended at the evidence stage, a position one Madras judge has shared in Rolls-Royce. Yet Kangaro holds that a Section 131 extension, capped at one month, remains available in Madras; limitation does not begin until the triggering document has actually been served and received; timely filing is not defeated by a slip in service; a missed deadline in Bombay and increasingly in Madras costs a party its evidence rather than its case; and the Bombay High Court has held the deadline to be directory altogether. The two-part rule that every brand owner and attorney should internalise is therefore this: treat the timeline as mandatory and never miss it, but know that if you are caught, the law now gives a diligent party more than one reasoned argument to be heard. Until the Supreme Court or a larger bench speaks, the prudent course remains the conservative one. File in time, prove service, move promptly, and keep the directory and service arguments as a safety net rather than a strategy.

14. Judgments and authorities

1. K.T. Jobanputra v. Registrar of Trade Marks, 1981 IPLR 93 (Bombay HC).
2. Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks, 2000 PTC 24 (Del) (Full Bench).
3. Wyeth Holdings Corporation v. Controller General of Patents, Designs and Trade Marks, 2006 SCC OnLine Guj 620; 2007 (34) PTC 1 (Guj).
4. Sunrider Corporation, USA v. Hindustan Lever Ltd., 2007 SCC OnLine Del 1018; 2007 (35) PTC 388 (Del).
5. Asian Paints Ltd. v. Assistant Registrar of Trade Marks (IPAB).
6. Sahil Kohli v. Registrar of Trade Mark, 2018 SCC OnLine IPAB 55.
7. Aman Engineering Works v. Registrar of Trade Marks, 2022/DHC/004701; 2022 SCC OnLine Del 3666 (Delhi HC).
8. V-Guard Industries Ltd. v. Registrar of Trade Marks, 2023/DHC/000137; C.A.(COMM.IPD-TM) 39/2022 (Delhi HC).
9. Mahesh Gupta v. Registrar of Trademarks (Single Judge), 2023 SCC OnLine Del 1324 (Delhi HC).
10. SAP SE v. Swiss Auto Products (reference order), C.A.(COMM.IPD-TM) 130/2021; order dated 3 July 2023 (Delhi HC).
11. Ramya S. Moorthy v. Registrar of Trade Marks, 2023 SCC OnLine Mad 5305; W.P.(IPD) Nos. 3 and 4 of 2023 (Madras HC).
12. Sun Pharma Laboratories Ltd. v. Dabur India Ltd., 2024:DHC:946; 2024 SCC OnLine Del 813; C.A.(COMM.IPD-TM) 146/2022 (Delhi HC).
13. Mahesh Gupta and Ors. v. Registrar of Trademarks (Division Bench), 2024 SCC OnLine Del 1750; LPA 429/2023 (Delhi HC).
14. Coaster Shoes Company Pvt. Ltd. v. Registrar of Trade Marks, 2024:BHC-OS:13607; Commercial Misc. Petition (L) No. 4309 of 2023 (Bombay HC).
15. Kangaro Industries (Regd.) v. V-Guard Industries, 2025:MHC:2131; (T)CMA(TM) No. 193 of 2023 (Madras HC).
16. Rolls-Royce PLC v. Union of India, W.P. No. 25070 of 2018; decided 8 October 2025 (Madras HC).
17. International Business Machines Corporation v. Tivoli Gardens, C.A.(COMM.IPD-TM) 45/2025; decided 28 February 2026 (Delhi HC).
18. ACE Foods (P) Ltd. v. Registrar of Trade Marks Office, CMA(TM) No. 22 of 2025; decided 10 February 2026 (Madras HC).
19. Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Commercial Misc. Petition No. 23 of 2026; decided 17 June 2026 (Bombay HC).
20. Supreme Court authorities referred to in the above decisions include Salem Advocate Bar Association v. Union of India; Kailash v. Nanhku, (2005) 4 SCC 480; Topline Shoes Ltd. v. Corporation Bank, (2002) 6 SCC 33; and Rohan Builders (India) Pvt. Ltd. v. Berger Paints (India) Ltd., (2025) 10 SCC 802.

Where a decision is cited in more than one reporter, both the neutral citation and the SCC OnLine citation are given so that the judgment can be traced regardless of the database in use. For very recent decisions, the official reporter pagination may still be settling, and the citation should be confirmed against the issuing court's copy before being relied on in a filing.

Disclaimer

This article is intended for general information and educational purposes only. It is not legal advice and should not be relied upon as a substitute for advice on the facts of any particular matter. The law in this area is actively developing, the High Courts have taken differing approaches on the same provisions, and some of the decisions discussed are very recent.