Two-Month Time Limit To File Evidence Under Rule 45 Of Trade Marks Rules 2017 Is Mandatory; Non-Compliance Results In Deemed Abandonment: Madras High Court

"When the Legislature, while putting in place the 2017 Rules, intended to employ the language ‘shall’ in sub-rule (1) and also in sub-rule (2) leading to the abandonment of opposition for non-compliance of the provisions of sub-rule (1), under Rule 45, their compliance should be treated as mandatory and not as directory." Madras High Court, in a significant judgment, held that the two-month timeline prescribed under Rule 45(1) of the Trade Marks Rules, 2017, for filing evidence in support of trademark opposition is mandatory, and failure to adhere to it results in the automatic deemed abandonment of the opposition under Rule 45(2).

A Division Bench comprising Justice P. Velmurugan and Justice K. Govindarajan Thilakavadi set aside a single judge's order that had revived an opposition proceeding, emphasizing that unlike the older 2002 Rules, the 2017 Rules consciously omitted discretionary extensions.

The dispute arose from a trademark application filed by V-Guard Industries Limited in May 2016 for the label mark featuring 'KANGARO' under Class 16. M/s. Kangaro Industries filed a notice of opposition, prompting V-Guard to submit its counter-statement, which was served on the opponent in August 2017. The opponent failed to file its evidence in support of opposition within the mandatory two-month period under Rule 45(1) of the 2017 Rules and instead sought an extension of time using Form TM-M under Section 131 read with Rule 109. The Assistant Registrar of Trade Marks rejected the extension request and held the opposition to be deemed abandoned under Rule 45(2). On appeal, a learned single Judge set aside the Registrar's order and remanded the matter, leading V-Guard to file the current Letters Patent Appeal.

The primary question before the court was whether the time limit stipulated under Rule 45 of the Trade Marks Rules, 2017, is mandatory or directory, and whether the Registrar has the power to grant extensions under Section 131 of the Trade Marks Act, 1999, in cases of default.

Strict Interpretation Of Statutory Language - "Rule 45 Expressly Employs Mandatory Language"

The bench observed that a plain reading of Rule 45(1) uses the word "shall" in multiple places, while Rule 45(2) explicitly dictates that if an opponent takes no action within the time mentioned, "he shall be deemed to have abandoned his opposition." The court noted that the deliberate departure from the earlier Rule 50 of the Trade Marks Rules, 2002—which permitted discretionary extensions—demonstrates clear legislative intent.

Omission Of Registrar's Discretion Under 2017 Rules

"No Inherent Power To Grant Extensions Under Rule 45"

The judges highlighted that the rule-making authority consciously removed the discretionary power of the Registrar to grant further extensions for filing opposition evidence under the 2017 regime. The bench reasoned that general provisions like Section 131 and Rule 109, which employ the discretionary term "may," cannot be invoked to override specific timelines and consequences expressly provided under Rule 45.

"When the first respondent had neither filed evidence nor relied on the contents of opposition within the period prescribed under Rule 45(1) and only sought an extension under Section 131 of the Act read with Rule 109 of the Rules, the Assistant Registrar has exercised his discretionary power and rejected the extension request and treated the opposition as deemed to have been abandoned under Rule 45(2)."

Availability Of Alternate Remedies

"Aggrieved Parties Must Resort To Rectification Proceedings"

Addressing the commercial ramifications, the court noted that once a trademark registration has been validly granted and rights have accrued to the applicant, an aggrieved opponent cannot circumvent statutory defaults by reviving abandoned opposition proceedings. The bench clarified that the appropriate legal recourse available to such a party is to seek rectification of the register under Sections 47 or 57 of the Trade Marks Act, 1999.

Concurring with the principles affirmed by the Delhi High Court in SAP SE v. Swiss Auto Products, the Madras High Court allowed the appeal, set aside the judgment of the learned single Judge, and restored the Assistant Registrar's order holding the opposition to be deemed abandoned.

The Division Bench concluded that the learned single Judge erred in treating the filing of an extension request as compliance with Rule 45(1). The court held that the statutory consequences of deemed abandonment cannot be averted by filing procedural delay-curing forms when the rule-making framework strictly bars extensions.

Date of Decision: 30 July 2026