The Rule 45 Deadlines in Trademark Oppositions- The High Court Divide

The Madras High Court recently ruled in V-Guard Industries v. Kangaro Industries (LPA No. 18 of 2026, decided 30 July 2026) that the two-month deadline under Rule 45 of the Trade Marks Rules, 2017 is strict and mandatory. If an opponent misses it, the opposition is deemed abandoned, and the Registrar has no power under Section 131 of the Trade Marks Act, 1999 (read with Rule 109) to extend that period. The Bench accordingly set aside a single Judge’s order that had revived the abandoned opposition and remanded it.

This ruling deepens a national split: Delhi and Madras say the deadline is absolute, while Bombay says it is flexible. With no Supreme Court ruling yet, the conflict is ripe for resolution.

1. Background Facts

•           V-Guard Industries applied to register label mark “KANGARO” in class 16 under Application No. 3254001 on 9 May 2016.

•           The mark was advertised in Trade Mark Journal No. 1767.

•           Kangaro Industries opposed the application on 6 January 2017.

•           V-Guard Industries filed its counter-statement on 19 May 2017 and the same was served on Kangaro on 5 August 2017.

•           Under Rule 45(1) of the 2017 Rules, Kangaro had two months from service of the counter-statement to file evidence in support of opposition, or to intimate that it would rely on the notice of opposition.

•           Kangaro instead sought a one-month extension on Form TM-M dated 23 September 2017 and filed evidence only on 18 October 2017.

•           The Assistant Registrar, by order dated 8 May 2018, rejected the extension and held the opposition deemed abandoned under Rule 45(2).

•           Kangaro appealed under Section 91 to the IPAB (27 July 2018); after the IPAB’s abolition the matter came to the Madras High Court’s IP Division.

•           By judgment dated 21 August 2025, the single Judge set aside the 8 May 2018 order and remanded the opposition — while recognising that registration had already been granted to V-Guard and directing that the registration would “abide the outcome” of the remanded opposition.

•           The Division Bench, on V-Guard’s LPA, allowed the appeal on 30 July 2026, restoring 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.

2. Key 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 (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 opposition versus rectification under Sections 47/57.

3. 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 infers a legislative intention that the timeline be strictly observed. It contrasts Rule 45 with Rule 50 of the 2002 Rules, which expressly permitted a one-month extension, and treats the 2017 draftsman’s omission of that discretion as deliberate.

Section 131 / Rule 109. The Bench holds 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 is therefore said to be impermissible.

Remedy and outcome. The Bench observes that the opponent is not remediless: it may seek rectification under Sections 47 or 57. Finding that the single Judge overlooked the mandatory character of Rule 45, the Bench sets aside the remand and allows the LPA.

Maintainability. The first respondent objected that Section 13(2) of the Commercial Courts Act bars the 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 this Court’s earlier practice of entertaining similar appeals.

4. The High Court Split

The mandatory/directory question is not new; it has migrated across three successive rule regimes. The following reconstruction situates V-Guard within it.

4.1 The pre-2017 foundation

Case	Regime	Holding on the evidence deadline
Hastimal Jain v. Registrar of Trade Marks, 2000 (52) DRJ (FB) 196	Rule 53, 1959 Rules	Directory — the Registrar had discretion to extend; the 1958 Act laid down no specific timeline.
Sunrider Corpn. v. Hindustan Lever (2007)	Rule 50(2), 2002 Rules	Mandatory — the Delhi High Court departed from Hastimal Jain given the amended structure of the 2002 Rules.
Wyeth Holdings Corpn. v. Controller General, 2006 SCC OnLine Guj 620	Corresponding rule	Directory — procedure should not defeat substantive rights.
Aman Engineering Works v. Registrar of Trade Marks	2002 Rules	Read certain outer-limit provisions as mandatory.

The takeaway: even before 2017, courts oscillated, and the answer turned on the structure of the particular rule set, not on the word “shall” alone.

4.2 The Delhi “mandatory” line under the 2017 Rules

The 2017 Rules replaced Rule 50’s express-discretion language with a terser formulation, prompting the argument that Parliament had made the deadline mandatory. The Delhi High Court broadly accepted this:

•           Sun Pharma Laboratories Ltd. v. Dabur India Ltd., 2024 SCC OnLine Del 813 (single Judge) — the two-month deadline is a hard, mandatory cut-off.

•           Mahesh Gupta v. Registrar of Trade Marks, 2024 SCC OnLine Del 1750 (Division Bench) — endorsed the mandatory reading.

•           SAP SE v. Swiss Auto Products — the single Judge (3 July 2023) disagreed with the 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) resolved the reference in favour of applying the 2017 timelines.

Two Madras single Judges had already aligned with the Delhi line, and the appellant here 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.

4.3 The Bombay “directory” line under the 2017 Rules

The counter-current is anchored in a single, closely reasoned decision:

•           Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Commercial Misc. Petition No. 23 of 2026 (Bombay High Court, Sundaresan J., 2026) 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)/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”; Rule 45 sits in the Rules, not the Act. Rule 45 is also 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.

4.4 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; and, on the sanctity/purity of the register and the parity between the right to register and the right to oppose, Khoday Distilleries Ltd. v. Scotch Whisky Association (2008) 10 SCC 723.

4.5 The split, distilled

	Mandatory (deadline is a guillotine)	Directory (Registrar retains discretion)
Delhi HC	Sun Pharma (2024); Mahesh Gupta (2024, DB); SAP SE reference	—
Bombay HC	—	Black Diamond Motors (2026)
Madras HC	ACE Foods (2025); V-Guard v. Kangaro (2026, DB)	—
IPAB (historical)	—	Sahil Kohli; Adhya Kumar
Supreme Court	No ruling yet on the 2017 Rules	No ruling yet on the 2017 Rules

5. Critical Evaluation of the V-Guard Reasoning

5.1 The “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.

5.2 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 Rule 45 and Rule 46. They cannot be invoked to cure abandonment, nor stretched to resurrect a proceeding that has already lapsed.

5.3 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.

5.4 On 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 Ltd. v. Scotch Whisky Association 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.

5.5 On maintainability of the LPA

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 appeal lies only from orders enumerated in Order XLIII 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 overrides the Letters Patent and bars intra-court appeals in the analogous patent context.

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.

5.6 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.

6. Impact on Jurisprudence

1.        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.

2.        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.

3.        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 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.

7. 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:

•           Square conflict between High Courts. Delhi and Madras treat Rule 45 as mandatory; Bombay treats it as directory.

•           No binding Supreme Court precedent. The character of the 2017 timeline remains unresolved at the apex level.

•           Recurring, high-frequency application. Rule 45 governs every contested opposition and rectification nationwide, affecting a large docket.

•           Clean, dispositive question of law. The issue is unclouded by disputed facts, making it ideal for authoritative settlement.

•           Doctrinal substance on both sides. The debate engages first principles: mandatory vs. directory construction, limits of legal fictions, Section 131’s reach over delegated timelines, and the balance between substantive rights and procedure.

Questions the Supreme Court must address:

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.        Whether a mandatory reading of Rule 45 can 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?

Grounds a Challenger Could Press

•           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.

•           A maintainability ruling in tension with the same Court’s decision in Italfarmaco.

8. 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.