The Rule 45 Deadline in Trademark Oppositions: The High Court Divide

Introduction

Few procedural rules decide as many trademark oppositions as Rule 45 of the Trade Marks Rules, 2017. It gives an opponent a two-month window, running from the date the applicant's counter-statement is served, to file evidence in support of the opposition — or to intimate that it will rely on the notice of opposition alone. If that window closes without action, Rule 45(2) treats the opposition as abandoned. What sounds like a housekeeping timetable has become one of the most consequential fault-lines in Indian trademark practice, because the courts cannot agree on a single question: is that two-month deadline mandatory, extinguishing the opposition on default, or merely directory, leaving the Registrar a discretion to condone delay?

The Madras High Court's Division Bench decision in V-Guard Industries v. Kangaro Industries now places a second High Court firmly in the "mandatory" camp alongside Delhi, in direct opposition to Bombay. The Bench set aside a Single Judge's order that had revived an abandoned opposition, restored the abandonment, and confirmed that recourse to Section 131 of the Trade Marks Act, 1999 cannot be used to rescue a lapsed Rule 45 filing. This article analyses the judgment, maps the national split it deepens, evaluates the reasoning critically, and asks whether the issue is now ready for the Supreme Court.

Background: V-Guard v. Kangaro

The dispute arose from a familiar collision of similar marks. The mark V-GUARD, with the device of a kangaroo, was first adopted by Mr. Kochouseph Chittilappilly in 1977 for voltage stabilisers. V-Guard Industries — a pioneer and leading manufacturer and trader in UPS systems, inverters, voltage stabilisers, wires, cables, water heaters, pumps, and kitchen and home appliances — applied to register the label mark "KANGARO" in Class 16 under Application No. 3254001 on 9 May 2016. The mark was advertised in Trade Mark Journal No. 1767.

The procedural timeline is where the case turns:

• Kangaro Industries opposed the application on 6 January 2017 (Opposition No. MAS-874593).
• V-Guard Industries filed its counter-statement on 19 May 2017, served on Kangaro Industries on 5 August 2017.
• Under Rule 45(1), Kangaro Industries then had two months from that service to file evidence in support of the opposition, or to intimate reliance on the notice of opposition.
• Instead, Kangaro Industries sought a one-month extension on Form TM-M dated 23 September 2017 and filed its evidence only on 18 October 2017.
• V-Guard Industries filed counter-evidence in support of its application under Rule 46 on 21 December 2017.
• Kangaro Industries again sought an extension on 19 January 2018 before filing reply evidence under Rule 47 on 3 February 2018.
• The Assistant Registrar issued a notice under Rule 45(1) on 1 March 2018 and, by order dated 8 May 2018, rejected the extension and held the opposition deemed abandoned under Rule 45(2).

Kangaro Industries appealed under Section 91 to the IPAB on 27 July 2018; after the IPAB's abolition, the matter reached the Madras High Court's IP Division in September 2023. By judgment dated 21 August 2025, a Single Judge set aside the 8 May 2018 order. While recognising that registration had already been granted to V-Guard and holding that a Section 91 appeal was maintainable against the Registrar's order, the Single Judge remanded the matter for fresh consideration, directing that the registration would abide the outcome of the remanded opposition.

On V-Guard's intra-court appeal, the Division Bench allowed the appeal on 30 July 2026 and restored the abandonment. The net result: V-Guard's "KANGARO" registration stands unclouded, and Kangaro Industries' opposition dies on a filing delay — without the confusion question ever being adjudicated on merits.

The Four Legal Questions

The judgment folds four distinct questions together:

1. Maintainability of the intra-court (Letters Patent) appeal under Section 13(2) of the Commercial Courts Act, 2015.
2. Whether Rule 45 of the 2017 Rules is mandatory or directory — the core question.
3. Whether Section 131 (read with Rule 109) can extend the Rule 45 period, and whether an appeal lies against a refusal to extend.
4. The consequence once registration has already been granted — revival of the opposition versus rectification under Sections 47 or 57.

The Court's Reasoning

Mandatory character. Rule 45(1) uses "shall" three times, and Rule 45(2) provides that an opponent who takes no action "shall be deemed to have abandoned his opposition." From this, the Bench inferred a legislative intention that the timeline be strictly observed. It contrasted Rule 45 with Rule 50 of the 2002 Rules, which expressly permitted a one-month extension, and treated the 2017 draftsman's omission of that discretion as deliberate.

Section 131 and Rule 109. The Bench held that Section 131 — which uses "may" — confers only a discretionary extension power for times not otherwise expressly provided, and that Rule 109's extension power likewise applies only where Section 131 is invoked, "but not under Rule 45," which itself prescribes both the time and the consequence. Recourse to Section 131 to extend a Rule 45 deadline was therefore held impermissible.

Remedy and outcome. The Bench observed that the opponent is not remediless: it may seek rectification under Sections 47 or 57. Finding that the Single Judge had overlooked the mandatory character of Rule 45, the Bench set aside the remand and allowed the appeal.

Maintainability. The first respondent objected that Section 13(2) of the Commercial Courts Act bars an intra-court appeal, especially against a remand. The Bench overruled the objection at admission, relying on the Delhi Division Bench in VR Holdings v. Hero Investcorp, 2023 SCC OnLine Del 4673, and on the Court's own earlier practice of entertaining similar appeals.

The High Court Split, Mapped

The debate over whether a procedural rule is mandatory or directory is longstanding, and it has shifted across three successive regulatory frameworks. Placing V-Guard within that trajectory shows why the current disagreement is so entrenched.

The pre-2017 foundation

Even before 2017, the courts oscillated, and the answer turned on the structure of the particular rule set rather than on the word "shall" alone.

The Delhi "mandatory" line under the 2017 Rules

The 2017 Rules replaced Rule 50's explicit discretion clause with a shorter formulation, prompting the argument that Parliament intended the deadline to be mandatory. The Delhi High Court broadly accepted this. In Sun Pharma Laboratories Ltd. v. Dabur India Ltd., 2024 DHC 946, a Single Judge held that the Registrar has no discretion under Rule 50 of the 2002 Rules, Rule 45 of the 2017 Rules, or Rules 101 and 109 of the respective rules, to extend the time period. In Mahesh Gupta v. Registrar of Trade Marks (heard with SAP SE v. Swiss Auto Products), 2024 SCC OnLine Del 1750, a Single Judge (3 July 2023) disagreed with a coordinate view and referred to a larger Bench the question whether the 2017 procedural rules (Rules 45/46) apply retrospectively to proceedings begun under the 2002 Rules, and whether the savings clause (Rule 158) preserved the earlier position. The larger Bench (13 March 2024) held, in substance, that the savings language preserves actions taken, decisions made, and rights granted under the 2002 Rules, so that the repeal of the 2002 Rules does not erase what was done under them before the 2017 Rules came into force.

Two Madras Single Judges had already aligned with the Delhi line, and the appellant additionally relied on ACE Foods Private Limited v. Registrar of Trade Marks (Madras, CMA(TM) No. 22 of 2025) and Tablets (India) Ltd. v. Spey Medicals (Delhi, 31 July 2025). V-Guard now adds a Madras Division Bench to this column.

The Bombay "directory" line under the 2017 Rules

The counter-current is anchored in a single, closely reasoned decision. In Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Commercial Misc. Petition No. 23 of 2026, the Bombay High Court held the Rule 45 deadline directory on four grounds:

1. Harmonious construction with Rules 46–48. Rule 48 empowers the Registrar to allow either party to lead further evidence at any stage on such terms as he thinks fit. If Rule 45 permanently extinguishes the right to file evidence, Rules 47 and 48 become meaningless in that party's hands — an absurd result.
2. Confinement of the deeming fiction. "Deemed abandonment" under Rules 45(2) and 46(2) must be read for its limited purpose and cannot be stretched to defeat the substantive rights created by Sections 21 and 57.
3. Section 131 survives. Section 131 bars extension only where the time is "expressly provided in this Act"; the two-month deadline under Rule 45 sits in the Rules, not the Act, and Rule 45 is absent from Rule 109(1)'s enumerated exclusions.
4. Procedure as servant. Following Kailash v. Nanhku, procedural law aids justice and does not extinguish rights on a technicality.

The IPAB had earlier taken a similar view in Sahil Kohli v. Registrar of Trade Marks, 2019 (77) PTC 352 (IPAB) and Adhya Kumar v. Mulligan Concept Teachers Association, 2019 SCC OnLine IPAB 7, holding that Section 131 powers survived the 2017 Rules.

The substantive-versus-procedural backdrop

Both camps mine the same body of Supreme Court authority on when "shall" is mandatory: Sushil Kumar Sen v. State of Bihar (1975) 1 SCC 774; Kailash v. Nanhku (2005) 4 SCC 480; Additional District Magistrate v. Siri Ram (2000) 5 SCC 451; Jagatjit Industries Limited v. IPAB (2016) 4 SCC 381; Ramnath Exports Private Limited v. Vinita Mehta (2022) 7 SCC 678; and Kerala State Electricity Board v. Thomas Joseph (2023) 11 SCC 700. On the sanctity of the register and the parity between the right to register and the right to oppose, both draw on Khoday Distilleries Ltd. v. Scotch Whisky Association (2008) 10 SCC 723.

The split, distilled

A Critical Evaluation of the V-Guard Reasoning

"Shall" is treated as near-dispositive

The Bench's core inference — three "shalls" plus a deeming clause, therefore mandatory — runs against the very Supreme Court authority cited before it. Kailash v. Nanhku and Sushil Kumar Sen establish that "shall" is not automatically imperative; whether a provision is mandatory turns on its object and on the consequence of non-compliance, assessed in context, not on counting occurrences of the word. The Bench asserts the conclusion rather than performing that inquiry.

The Rule 47/48 argument

The Bombay High Court in Black Diamond Motors reasoned that a mandatory reading of Rule 45 would render Rules 47 and 48 otiose. With respect, this conflates distinct procedural stages. Rule 47 governs "evidence in reply" and arises only if the applicant has filed affidavit evidence under Rule 46. Where the applicant merely intimates reliance on the application without filing such evidence, Rule 47 does not apply. Likewise, if the opponent fails to file evidence or a reliance statement within the Rule 45 window, the opposition is deemed abandoned under Rule 45(2), and the proceeding does not survive to reach the Rule 46/47 stage at all.

Rule 48's discretion to admit "further evidence" operates only in continuation of evidence already on record; it cannot substitute for the foundational filings required under Rule 45. To hold otherwise would nullify the abandonment consequence expressly enacted in Rule 45(2). In short, Rules 47 and 48 are structurally dependent on compliance with Rules 45 and 46. They cannot be invoked to cure abandonment, nor stretched to resurrect a proceeding that has already lapsed.

The conclusory Section 131 / Rule 109 analysis

The Bench held Section 131 inapplicable on the ground that Rule 45 "expressly provides" both the time and the consequence. This reasoning is problematic. Section 131 excludes only periods "expressly provided in this Act," whereas Rule 45 is delegated legislation under the Rules, not the Act itself. Rule 109(1) likewise enumerates specific exclusions — timelines under the Act, under Rule 85, under Rule 86(3), or those separately provided in the Rules — but does not mention Rule 45.

On a plain textual reading, Rule 45's two-month deadline does not fall within any of these exclusions. The Bench simply asserts that Rule 109 operates "not under Rule 45," without explaining why. The stronger argument is that Rule 45 sits outside the exclusion list and therefore remains subject to the Registrar's discretionary extension power under Section 131 read with Rule 109. By leaving this textual point unanswered, the judgment exposes itself to challenge.

The scope of the "deemed abandonment" fiction

A settled canon of statutory construction holds that a legal fiction must be confined to the purpose for which it is created. The Bombay High Court in Black Diamond Motors applied this principle to cabin the "deemed abandonment" clause in Rule 45(2), reasoning that it should not annihilate the substantive right to oppose. By contrast, the V-Guard Division Bench gave the fiction its widest possible operation, treating abandonment as an absolute bar without addressing this limiting principle.

This approach overlooks the Supreme Court's concern in Khoday Distilleries that the right to oppose is as valuable as the right to register. A fiction designed to streamline procedure cannot be allowed to extinguish substantive rights altogether. The absence of any engagement with this canon leaves the V-Guard ruling vulnerable, as it risks elevating procedural default over the integrity of the register.

The maintainability of the Letters Patent Appeal

The Division Bench entertained the appeal by citing VR Holdings and prior practice, but without engaging with Section 13(2) of the Commercial Courts Act, which contains a non-obstante bar. The prevailing view, reflected in Bank of India v. Maruti Civil Works (Bombay DB, 2023), is that a Section 13(1A) appeal lies only from orders enumerated in Order XLIII of the CPC. More strikingly, the same Madras High Court in Italfarmaco SpA v. Controller of Patents & Designs (2025 SCC OnLine Mad 13148) held that the Commercial Courts Act prevails over the Letters Patent of the High Court, and that an intra-court appeal under Clause 15 of the Letters Patent is not maintainable where it is not contemplated by the Act.

The Bench in V-Guard did not reconcile its approach with this contrary authority. While the statutory routes differ — Section 117A for patents and Section 91 for trademarks — and while a remand order raises its own appealability question, the maintainability ruling remains under-reasoned. By relying on precedent without addressing the statutory bar or its own recent contrary decision, the judgment leaves a doctrinal gap that weakens its foundation.

The registration-already-granted knot

A genuine anomaly underlies the case: V-Guard's mark was registered while the opposition's fate was still contested. The Single Judge attempted to resolve this by directing that the registration "abide the outcome" of the remand. The Division Bench rightly found this contradictory, since a registration cannot be simultaneously valid and contingent on a revived opposition. On this narrow point the Bench is persuasive, and its steer toward rectification under Sections 47/57 as the opponent's post-registration remedy is doctrinally sound.

Yet this outcome also exposes the cost of the mandatory reading. A mark that might have been refused after ordinary opposition scrutiny now sits on the register, challengeable only through rectification — a slower, more expensive process. The result is a procedural shortcut that risks undermining the integrity of the register by allowing marks to bypass substantive examination on technical default.

Impact on Jurisprudence

The split hardens. V-Guard places a Madras Division Bench firmly in the "mandatory" camp alongside Delhi, directly opposed to Bombay. What should be a uniform national registration procedure now yields forum-dependent outcomes: an opponent who misses the two-month window is finished in Chennai and Delhi but potentially salvageable in Mumbai.

Procedural asymmetry entrenched. The mandatory reading empowers applicants to extinguish oppositions on technical delay, forcing opponents into slower, costlier post-registration rectification. Whether this strengthens the integrity of the register or merely rewards procedural gamesmanship is now a live policy fault-line.

The "purity of the register" interest is underweighted. By resolving oppositions on default rather than merits, the mandatory approach risks admitting marks without the confusion inquiry that the opposition mechanism exists to perform. This undercuts the public-interest concern highlighted in Khoday Distilleries, which treats the right to oppose as co-equal with the right to register.

Is an Apex-Court Challenge Warranted?

Yes — and the case for it is compelling. All the conditions that typically justify Supreme Court intervention are present: a square conflict between High Courts (Delhi and Madras treat Rule 45 as mandatory; Bombay treats it as directory); no binding Supreme Court precedent on the character of the 2017 timeline; recurring, high-frequency application, since Rule 45 governs every contested opposition and rectification nationwide; a clean, dispositive question of law unclouded by disputed facts; and doctrinal substance on both sides, engaging first principles of mandatory-versus-directory construction, the limits of legal fictions, Section 131's reach over delegated timelines, and the balance between substantive rights and procedure.

The questions the Supreme Court would need to address are these:

1. Is the two-month period in Rule 45(1) mandatory or directory, judged by the object-and-consequence test in Kailash v. Nanhku rather than by the bare word "shall"?
2. Can a mandatory reading of Rule 45 be reconciled with Rules 47 and 48 — the precise point on which the High Courts most sharply divide?
3. Does the Registrar's Section 131 discretion survive as to Rule 45 timelines, given that Rule 45 sits in the Rules (not the Act) and is absent from Rule 109(1)'s exclusions?
4. Must the "deemed abandonment" fiction be confined to its purpose so as not to defeat substantive rights under Sections 21 and 57?
5. Ancillary but important: is an intra-court/Letters Patent appeal against a remand order in a transferred Section 91 proceeding maintainable in the teeth of Section 13(2) of the Commercial Courts Act?

A challenger could press four grounds: failure to apply the binding Kailash v. Nanhku framework, treating "shall" as conclusive; an unreasoned reading of Section 131/Rule 109 that assumes, rather than demonstrates, that Rule 45's timeline falls within the statutory exclusions; failure to confine the deeming fiction consistent with settled canons; and a maintainability ruling in tension with the same Court's decision in Italfarmaco.

Conclusion

V-Guard Industries v. Kangaro Industries is a competently reasoned judgment that reaches a defensible result within the "mandatory" school it joins — and it is correct on the narrow point that a registration cannot be left hanging on a resuscitated opposition. Yet it is also a judgment that chooses sides in a national conflict without fully reconciling the opposing view. Its conclusory treatment of Section 131, its unbounded use of the deeming fiction, and its thin maintainability analysis are fault lines along which it remains vulnerable.

More importantly, the decision confirms that the divergence over Rule 45 is no longer an intra-court wrinkle but a settled disagreement across three High Courts, with no apex authority to bind them. That is the classic trigger for Supreme Court intervention. Until the Court speaks, the paradox remains: in Bombay, procedure continues to serve justice; in Delhi and Chennai, the clock runs like a guillotine. Which regime governs a trademark opposition depends not on principle, but on the city in which it is filed.