Madras High Court Sets Aside Order Reviving Kangaro's Trademark Opposition Against V-Guard

The Madras High Court has held that a trademark opponent cannot seek extra time to file evidence after missing the mandatory two-month deadline prescribed under the Trade Marks Rules, 2017.

Setting aside a single judge's order, the court restored the assistant registrar's decision treating Kangaro Industries' opposition to V-Guard Industries' trademark application as abandoned.

"The intention of the Legislature is that the time prescribed under Rule 45 shall be strictly adhered to and unlike Rule 50 of the 2002 Rules, extension of time is not provided under the 2017 Rules," a division bench observed.

A division bench of Justice P. Velmurugan and Justice K. Govindarajan Thilakavadi held that Kangaro Industries' opposition was rightly treated as abandoned. The company neither filed evidence within the prescribed two months nor informed the Registrar that it intended to rely on the facts stated in its notice of opposition, as required under Rule 45.

The dispute arose from V-Guard's application dated May 9, 2016, seeking registration of a label mark featuring "KANGARO" under Class 16. Kangaro Industries filed its opposition in January 2017.

After Kangaro Industries received a copy of V-Guard's counter statement, it had two months to take the next step. It could either file evidence supporting its opposition or inform the Registrar that it would rely on the facts already set out in its notice of opposition.

Instead, Kangaro Industries sought a one-month extension by filing Form TM-M. The Assistant Registrar of Trade Marks rejected the request on May 8, 2018, holding that the opposition stood deemed abandoned under Rule 45.

Kangaro Industries challenged that decision before the erstwhile Intellectual Property Appellate Board. After the tribunal was abolished, the matter was transferred to the Madras High Court's Intellectual Property Division.

On August 21, 2025, the single judge set aside the Assistant Registrar's order. The matter was sent back for fresh consideration, with a direction that V-Guard's trademark registration would remain subject to the outcome of the opposition proceedings.

V-Guard challenged that decision. It argued that the 2017 Trade Marks Rules deliberately removed the earlier provision that allowed more time to file evidence during opposition proceedings.

The division bench framed the central question as whether Rule 45 of the Trade Marks Rules, 2017 is mandatory or directory.

Examining the provision, the bench noted that Rule 45 uses the word "shall" three times. It also states that an opponent who takes no action within the prescribed period "shall be deemed to have abandoned his opposition."

"The intention of the Legislature is that the time prescribed under Rule 45 shall be strictly adhered to," the bench observed. It added that, unlike the 2002 Rules, the 2017 Rules do not provide any mechanism for extending that deadline.

The bench also examined the general provision that allows the Registrar to extend certain deadlines in appropriate cases. It held that this general power cannot override Rule 45 because the rule itself fixes a specific timeline and expressly states the consequence of missing it.

Finding no fault with the Assistant Registrar's decision, the bench said "there is no arbitrariness in rejecting the request made by the first respondent."

It added that Kangaro Industries was not left without a remedy. If it wanted to challenge V-Guard's registration, it could still initiate separate proceedings seeking cancellation or rectification of the trademark instead of trying to revive an opposition that had already been deemed abandoned.

Holding that the single judge had "failed to consider the mandatory provisions of Rule 45 of the Trade Marks Rules, 2017," the division bench set aside the judgment and allowed V-Guard's letters patent appeal.