Brief Legal News Write-Up
Kangaro Industries Vs V-Guard Industries & Anr.
Date of Judgment: 21.08.2025 : Case No.: (T)CMA(TM) No.193 of 2023 (SR.No.74/2018/TM/CHN) : Neutral Citation: 2025:MHC:2131 : Court: High Court of Judicature at Madras : Hon'ble Judge: Justice Senthilkumar Ramamoorthy
The Court considered a dispute concerning the maintainability of an application for extension of time to file evidence in support of a trademark opposition under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The case arose from allegations that the Registrar of Trade Marks wrongly treated Kangaro Industries’ opposition to V-Guard Industries’ trademark application as abandoned after refusing an application seeking extension of time for filing evidence.
The principal question before the Court was whether an application under Section 131 of the Trade Marks Act, 1999 could be invoked to seek extension of the two-month period prescribed under Rule 45(1) of the Trade Marks Rules, 2017 and whether the opposition could consequently be deemed abandoned under Rule 45(2).
After examining the material on record and the submissions of the parties, Justice Senthilkumar Ramamoorthy observed that Section 131 permits extension of time in cases where the time limit is not expressly fixed by the Act itself and that Rule 45 does not exclude the operation of Section 131. The Court held that an application seeking extension of time filed within the original two-month period constitutes sufficient action under Rule 45(1), thereby preventing the automatic operation of the deemed abandonment provision under Rule 45(2). The Court emphasized that legal fictions such as deemed abandonment should be confined to their intended purpose and not be applied mechanically where the opponent has actively pursued the proceedings.
Accordingly, the Court disposed of the appeal by setting aside the Registrar’s order, restoring the opposition proceedings for adjudication on merits, and directing that the existing registration shall remain subject to the final outcome of the remanded opposition proceedings.
Disclaimer: Readers are advised not treat this as a substitute for legal advise as it is based on limited information and is intended solely for general informational purposes.
Can Section 131 of the Trade Marks Act Extend the Time for Filing Evidence in Opposition Proceedings? Madras High Court Clarifies the Law
Introduction
The decision of the Madras High Court in Kangaro Industries (Regd.) v. V-Guard Industries & Anr. is an important ruling for trademark proprietors, applicants, intellectual property practitioners, and businesses involved in trademark disputes. The judgment addresses a recurring procedural issue in trademark opposition proceedings: whether the Registrar of Trade Marks has the authority to extend the time prescribed for filing evidence in support of an opposition under the Trade Marks Rules, 2017.
Trademark opposition proceedings play a crucial role in preventing the registration of marks that may conflict with existing rights. Procedural defaults during such proceedings can have serious consequences, including deemed abandonment of an opposition. The Court's ruling clarifies the relationship between Section 131 of the Trade Marks Act, 1999 and Rule 45 of the Trade Marks Rules, 2017, while also explaining the limits of the deemed abandonment doctrine. The judgment is therefore significant for ensuring fairness in trademark adjudication and preventing technical procedural defaults from defeating substantive rights.
Factual and Procedural Background
V-Guard Industries filed an application on 9 May 2016 seeking registration of a label mark containing the expression "KANGARO" as a prominent feature. Kangaro Industries, claiming prior adoption and use of the mark "KANGARO" since 1959, opposed the registration by filing a notice of opposition on 6 January 2017.
The applicant filed its counter-statement on 19 May 2017. According to the record, the opponent received the counter-statement on 5 August 2017. Under Rule 45 of the Trade Marks Rules, 2017, the opponent was required to file evidence in support of the opposition within two months from receipt of the counter-statement.
Before expiry of that period, Kangaro Industries filed Form TM-M on 23 September 2017 seeking a one-month extension of time. Evidence in support of the opposition was subsequently filed on 18 October 2017. Thereafter, V-Guard filed its evidence in support of the application and Kangaro filed evidence in reply.
Despite the progress of the proceedings, the Registrar of Trade Marks issued a notice regarding the delay in filing evidence and ultimately passed an order on 8 May 2018 rejecting the request for extension. The Registrar concluded that the 2017 Rules did not permit any extension of time under Rule 45 and consequently held that the opposition stood abandoned under Rule 45(2).
Aggrieved by this decision, Kangaro Industries filed an appeal before the Madras High Court under Section 91 of the Trade Marks Act.
Dispute Before the Court
The primary controversy before the Court concerned the interpretation of Section 131 of the Trade Marks Act and Rule 45 of the Trade Marks Rules, 2017.
Kangaro Industries argued that Section 131 permits extension of time whenever the relevant time limit is not expressly provided in the Act itself. Since Section 21(4) merely states that evidence shall be filed within the prescribed time and leaves the specification of that time to the Rules, it was argued that Section 131 remained available.
The appellant further contended that Rule 109, which governs applications for extension of time under Section 131, did not prohibit such an application in the context of Rule 45.
V-Guard Industries argued that the omission of the earlier provision allowing a one-month extension under the 2002 Rules reflected a deliberate legislative intention to make the two-month period under Rule 45 absolute and mandatory. It was contended that allowing extensions through Section 131 would defeat the objective of expediting opposition proceedings and would undermine the deemed abandonment provision contained in Rule 45(2).
The Court was therefore required to determine whether Section 131 could be invoked to seek extension of time under Rule 45 and whether the opposition had been rightly treated as abandoned.
Reasoning and Analysis of the Court
The Court first examined the maintainability of the appeal. Although Section 131 provides that no appeal lies from an order passed under that provision, the Court observed that the Registrar's order was not merely an order refusing extension. It also declared that the opposition stood abandoned. Consequently, the order was a composite order affecting substantive rights and was appealable under Section 91 of the Trade Marks Act.
The Court then undertook a detailed analysis of Section 21 of the Trade Marks Act. It noted that Section 21 expressly prescribes time limits for filing a notice of opposition and a counter-statement. In contrast, Section 21(4) merely provides that evidence shall be submitted "within the prescribed time," leaving the actual period to be prescribed through subordinate legislation.
The Court carefully examined Section 131, which authorizes the Registrar to extend time for doing any act "not being a time expressly provided in this Act." According to the Court, the expression "expressly provided in this Act" could not be interpreted as including time limits prescribed only through rules. If Parliament intended such a broad exclusion, it could have expressly stated so.
The Court further analyzed Rule 109 of the Trade Marks Rules, 2017. Rule 109 excludes extension applications in certain specified situations, including cases where the Act itself expressly prescribes the time limit or where a specific rule already provides for extension. The Court found that Rule 45 did not prescribe any maximum period beyond which extension was barred and did not fall within the exclusions contemplated by Rule 109.
An important aspect of the judgment is the Court's discussion of the legislative history. Under Rule 50 of the Trade Marks Rules, 2002, an opponent could seek a one-month extension beyond the initial two-month period. Although the 2017 Rules omitted that express provision, Rule 109 simultaneously empowered the Registrar to grant an extension of up to one month in appropriate cases. The Court concluded that the overall statutory framework continued to permit a limited extension through Section 131 read with Rule 109.
The Court also examined the concept of deemed abandonment under Rule 45(2). It emphasized that legal fictions must be confined to the purpose for which they are created. The provision was intended to address situations where an opponent takes no steps whatsoever after filing an opposition.
In the present case, the opponent had actively pursued the proceedings by filing an extension application, subsequently filing evidence, participating in further evidentiary stages, and continuing to prosecute the opposition. In these circumstances, treating the opposition as abandoned would be inconsistent with both logic and fairness.
The Court referred extensively to several decisions, including Hastimal Jain v. Registrar of Trade Marks (2000) 52 DRJ 196 (FB), SAP SE v. Swiss Auto Products 2024 SCC OnLine Del 1750, Sun Pharma Industries Ltd. v. Dabur India Ltd. 2024:DHC:946, Victor Guedes Industria v. Deputy Registrar of Trade Marks 2023:MHC:1193, Needle Industries (India) Ltd. v. Needle Industries Newey (India) Holdings Ltd., AIR 1981 SC 1298, and foreign authorities dealing with statutory interpretation.
While the Court agreed with certain aspects of the Delhi High Court's analysis in SAP SE, it respectfully disagreed with the conclusion that Rule 45 completely excluded the operation of Section 131. The Court held that the better interpretation was one that preserved the statutory power of extension while maintaining an outer limit of one month under Rule 109.
Final Decision of the Court
The Court allowed the appeal to the extent of setting aside the Registrar's order refusing extension and declaring the opposition abandoned.
The opposition proceedings were restored and remanded for adjudication on merits. However, the Court declined to cancel the trademark registration already granted to V-Guard Industries because the registration had remained in force for several years and had been relied upon in subsequent proceedings.
Instead, the Court directed that the registration would remain subject to the outcome of the remanded opposition proceedings. If Kangaro Industries ultimately succeeds, the Registrar would be required to rectify the register by removing the impugned registration. If the opposition fails, the registration would continue to remain valid.
The appeal was disposed of without any order as to costs.
Point of Law Settled
The judgment clarifies that Section 131 of the Trade Marks Act, 1999 can be invoked to seek extension of time in relation to acts for which the time limit is prescribed by the Trade Marks Rules rather than expressly fixed by the Act itself.
The Court further held that an application seeking extension of time filed within the original period prescribed under Rule 45 constitutes sufficient action to prevent the operation of the deemed abandonment provision under Rule 45(2). The ruling reinforces the principle that procedural rules should facilitate fair adjudication and should not be applied in a manner that unnecessarily defeats substantive rights.
The decision is likely to have considerable impact on trademark opposition practice by providing greater clarity regarding the Registrar's powers under Section 131 and by limiting the circumstances in which opposition proceedings may be treated as abandoned.
Case Details:
Title of the Case: Kangaro Industries (Regd.) v. V-Guard Industries & Anr.
Date of Judgment/Order: 21.08.2025
Case Number: (T)CMA(TM) No.193 of 2023 (SR.No.74/2018/TM/CHN)
Neutral Citation: 2025:MHC:2131
Name of Court: High Court of Judicature at Madras
Name of Hon'ble Judge: Justice Senthilkumar Ramamoorthy
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
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Headnote of the Judgment
Kangaro Industries (Regd.) v. V-Guard Industries & Anr., High Court of Judicature at Madras, (T)CMA(TM) No.193 of 2023, decided on 21.08.2025, Neutral Citation: 2025:MHC:2131. The appellant challenged an order of the Registrar of Trade Marks refusing an application for extension of time to file evidence in support of a trademark opposition and treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, 2017. The High Court held that Section 131 of the Trade Marks Act, 1999 may be invoked where the time limit is prescribed by the Rules and not expressly by the Act. The Court further held that filing an extension application within the prescribed period constitutes sufficient action to prevent deemed abandonment. The impugned order was set aside and the opposition proceedings were restored for adjudication on merits, subject to the outcome affecting the existing registration.
Infographic Thumbnail Prompt
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