Mandatory Two Months Time Limit for Filing Evidence in Support of Opposition Under Rule 45 of Trade Marks Rules 2017 is Mandatory and Default Leads to Deemed Abandonment: Madras High Court
[Case Title] : V-Guard Industries Limited Vs Kangaro Industries and another
Date of Judgment: 30-07-2026
Case No.: LPA No. 18 of 2026
Neutral Citation : 2026:MHC:LPA18
[Court Name] : High Court of Judicature at Madras
Name of Hon'ble Judge: Hon'ble Mr. Justice P. Velmurugan and Hon'ble Mrs. Justice K. Govindarajan Thilakavadi
Factual and Procedural Background
V-Guard Industries applied for registration of a label mark containing KANGARO in Class 16 on 09.05.2016. M/s. Kangaro Industries opposed the application on 06.01.2017. V-Guard filed its counter statement on 19.05.2017, which was received by Kangaro Industries on 05.08.2017. Under Rule 45(1) of the Trade Marks Rules, 2017, Kangaro Industries was required to file evidence in support of opposition or intimate reliance on the notice of opposition within two months. Instead, Kangaro filed Form TM-M on 23.09.2017 seeking a one-month extension and submitted evidence on 18.10.2017. The Assistant Registrar of Trade Marks rejected the extension request on 08.08.2018 and held the opposition abandoned under Rule 45(2). On appeal under Section 91 before a single Judge, the rejection order was set aside and the matter was remanded. V-Guard filed the present Letters Patent Appeal against the order of the single Judge.
Dispute before Court
Whether Rule 45 of the Trade Marks Rules, 2017 is mandatory or directory, and whether the Registrar of Trade Marks has discretionary power under Section 131 of the Trade Marks Act, 1999 read with Rule 109 to grant an extension of time for filing evidence in support of opposition when Rule 45(2) expressly prescribes deemed abandonment for default.
Reasoning of Judge
The Court observed that Rule 45(1) uses the word shall thrice and Rule 45(2) prescribes that the opponent shall be deemed to have abandoned the opposition upon failure to act. Unlike Rule 50 of the Trade Marks Rules, 2002, the 2017 Rules consciously omitted the discretion to grant an extension of time. The statutory provisions of Section 131 and Rule 109 cannot be invoked where a specific time limit and default consequence are expressly provided in Rule 45. Therefore, compliance with Rule 45 is mandatory, and failure to file evidence or intimate reliance on opposition facts within two months results automatically in statutory abandonment.
Decision
The Division Bench set aside the judgment of the single Judge and upheld the Assistant Registrar's order treating the opposition as deemed to have been abandoned under Rule 45(2) of the Trade Marks Rules, 2017. The Letters Patent Appeal was allowed without costs.
One Important legal principle held in the case
The period of two months prescribed under Rule 45(1) of the Trade Marks Rules, 2017 for filing evidence in support of opposition is mandatory, and failure to comply leads to mandatory statutory abandonment of opposition under Rule 45(2), with no scope for extension under Section 131 of the Trade Marks Act, 1999.
[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]
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Strict Timelines in Trademark Opposition: Madras High Court Reaffirms Mandatory Nature of Rule 45 under Trade Marks Rules 2017
Introduction:
Trademark registration procedures in India are governed by structured timelines designed to bring commercial certainty and protect brand rights. A crucial stage in this process occurs when a published trademark application faces opposition from a third party. Under the statutory framework, both the applicant and the opponent are required to submit their respective pleadings and supporting evidence within designated time limits. The interpretation of these time limits, specifically whether they are strictly mandatory or merely flexible administrative directions, has frequently been a subject of judicial debate. The Division Bench of the High Court of Judicature at Madras recently delivered a significant ruling analyzing whether the Registrar of Trade Marks possesses the power to extend the time period for filing evidence in support of an opposition under the Trade Marks Rules, 2017.
Factual and Procedural Background:
The history of the case traces back to 09.05.2016, when an application was submitted for the registration of a label mark featuring KANGARO in Class 16. Following the publication of the mark in the Trade Marks Journal, a notice of opposition was filed on 06.01.2017 by an opposing entity. In response, the trademark applicant filed its counter statement on 19.05.2017, which was officially served on the opposing party on 05.08.2017.
During the pendency of these proceedings, the Trade Marks Rules, 2017 came into force, replacing the earlier 2002 regulatory framework. Under Rule 45(1) of the 2017 Rules, an opponent is mandated to either file evidence by way of affidavit in support of the opposition or formally intimate that it intends to rely solely on the facts stated in its notice of opposition, within two months from the receipt of the counter statement.
In this case, the two-month period from the date of receipt of the counter statement expired without the opponent filing its evidence or issuing the required statutory intimation. Instead, on 23.09.2017, the opponent submitted Form TM-M seeking a one-month extension of time to file evidence, subsequently submitting its evidence on 18.10.2017. The applicant thereafter filed its evidence on 21.12.2017.
The Assistant Registrar of Trade Marks examined the matter and issued a notice regarding the procedural delay. By an order dated 08.05.2018, the Assistant Registrar rejected the extension application and declared that the opposition stood deemed to have been abandoned under Rule 45(2) of the Trade Marks Rules, 2017.
Aggrieved by this decision, the opponent filed an appeal under Section 91 of the Trade Marks Act, 1999 before the Intellectual Property Appellate Board on 27.07.2018. Upon the abolition of the appellate tribunal, the proceeding was transferred to the Intellectual Property Division of the High Court. A single Judge of the High Court set aside the Assistant Registrar's order and remanded the opposition for fresh consideration on merits, while directing that the registration granted to the applicant in the interim would abide by the outcome of the remanded opposition. The applicant then instituted a Letters Patent Appeal before the Division Bench challenging the single Judge's judgment.
Dispute Before the Court
The primary legal issue presented before the Division Bench was whether the two-month timeline specified under Rule 45(1) of the Trade Marks Rules, 2017 is mandatory or directory in nature.
The applicant argued that unlike Rule 50 of the repealed 2002 Rules, which expressly granted discretion to the Registrar to extend the period for filing evidence by one additional month, Rule 45 of the 2017 Rules deliberately removed all discretionary extensions. It was contended that Rule 45(2) establishes an automatic legal fiction of deemed abandonment if an opponent fails to file evidence or intimate reliance on its notice of opposition within the two-month window. The applicant further submitted that general provisions empowering the Registrar to extend timelines, such as Section 131 of the Trade Marks Act, 1999 read with Rule 109 of the 2017 Rules, cannot be invoked where a specific rule contains an express statutory deadline accompanied by an explicit consequence of default.
On the other hand, the opponent contended that procedural rules should not be interpreted so rigidly as to destroy substantive rights vested in trademark litigants. It was argued that the right to oppose a trademark application is vital to maintaining the purity of the register and serving public interest. The opponent maintained that the filing of Form TM-M within the two-month window demonstrated active steps, and the Registrar retained discretionary power under Section 131 and Rule 109 to condone procedural delays in the interest of justice.
Reasoning and Analysis of the Court
The Division Bench undertook a detailed statutory analysis of Rule 45 of the Trade Marks Rules, 2017 in contrast with the statutory provisions of the Trade Marks Act, 1999 and predecessor rules. The Bench highlighted the precise legislative drafting of Rule 45(1), noting that the word shall is employed three distinct times to mandate the procedural duties of an opponent. Furthermore, Rule 45(2) explicitly states that if an opponent takes no action under sub-rule (1) within the prescribed time, he shall be deemed to have abandoned his opposition.
The Court emphasized the crucial shift introduced by the executive while framing the 2017 Rules. Under Rule 50 of the Trade Marks Rules, 2002, the Registrar had express authority to grant a further extension of one month beyond the initial two-month period. The complete exclusion of this discretionary extension in Rule 45 of the 2017 Rules reflects a clear legislative intention to enforce strict, unyielding deadlines for evidence submission during opposition proceedings.
In analyzing the applicability of Section 131 of the Trade Marks Act, 1999 and Rule 109 of the 2017 Rules, the Court clarified that general discretionary powers to extend time apply only to matters where a specific time limit is not expressly provided with an absolute statutory consequence. Rule 109 itself excludes matters where time limits are expressly governed by specific rules. Because Rule 45 provides both a strict time limit and an explicit penalty of deemed abandonment, recourse to general extension provisions under Section 131 or Rule 109 is impermissible.
The Court examined various judicial authorities cited by the parties, including decisions emphasizing that procedural law must serve substantive justice as well as decisions confirming that statutory rules framed under an Act carry mandatory force when framed to streamline time-bound commercial adjudication. The Court concurred with the principle that where the law imposes an automatic consequence of default through a legal fiction of deemed abandonment, courts and administrative authorities cannot create exceptions that defeat the text and objective of the law. Consequently, the Assistant Registrar's decision to reject the extension application and treat the opposition as abandoned was fully justified and legally sound.
Final Decision of the Court
The Division Bench allowed the Letters Patent Appeal and set aside the judgment of the single Judge. The Court restored the order dated 08.05.2018 passed by the Assistant Registrar of Trade Marks, which had declared the opposition as deemed to have been abandoned under Rule 45(2) of the Trade Marks Rules, 2017. Consequently, the trademark application was freed from the revived opposition proceedings, protecting the statutory rights accrued to the registered proprietor. All connected miscellaneous applications were closed without any order as to costs.
Point of Law Settled
This decision clarifies and settles a critical point of intellectual property law regarding trademark opposition procedure in India. The High Court established that the two-month period prescribed under Rule 45(1) of the Trade Marks Rules, 2017 for filing evidence in support of an opposition is absolute and mandatory. Failure to file affidavit evidence or formally intimate reliance on the notice of opposition within this two-month period results in automatic deemed abandonment of the opposition under Rule 45(2). The Registrar of Trade Marks lacks statutory authority or inherent discretion under Section 131 of the Trade Marks Act, 1999 or Rule 109 of the 2017 Rules to grant extensions of time for evidence submission under Rule 45. This ruling reinforces procedural discipline and commercial efficiency in trademark prosecution across India.
Title of the Case: V-Guard Industries Limited vs. M/s. Kangaro Industries and another
Date of Judgment: 30-07-2026
Case Number: LPA No. 18 of 2026 and CMP No. 12387 of 2026
Neutral Citation: 2026:MHC:LPA18
Name of Court: High Court of Judicature at Madras
Name of Hon'ble Judge: Hon'ble Mr. Justice P. Velmurugan and Hon'ble Mrs. Justice K. Govindarajan Thilakavadi
Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .
Headnote of the Judgment:
V-Guard Industries Limited vs. M/s. Kangaro Industries and another, High Court of Judicature at Madras. Letters Patent Appeal filed against single Judge order remanding trademark opposition. Opponent failed to submit evidence within two months under Rule 45(1) of Trade Marks Rules 2017 and sought extension via Form TM-M. Assistant Registrar rejected extension and treated opposition as abandoned under Rule 45(2). High Court held Rule 45 is mandatory, extension under Section 131 is impermissible, and set aside single Judge order, restoring deemed abandonment. Appeal allowed.
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