V-Guard Industries Limited v. M/s.Kangaro Industries
No, not where Rule 45 governs. Section 131 and Rule 109 employ the language 'may' and confer a discretionary power on the Registrar to extend the time if he is satisfied with the sufficient cause, but Rule 109 itself excludes a time expressly provided in the Act or prescribed by rule, and Rule 45 prescribes the time limit for compliance and in default thereof the consequences thereto in express terms. Where the opponent 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 read with Rule 109, there was no arbitrariness in the Assistant Registrar rejecting the request and treating the opposition as deemed to have been abandoned. The opponent's remedy thereafter is under Section 47 or Section 57 of the Trade Marks Act.
Trade Marks Act, 1999 — s.21 — s.91 — s.131 — Trade Marks Rules, 2017 — r.45 — r.109 — Evidence in support of opposition — Deemed abandonment — Extension of time —
Trade Marks Rules, 2017 — r.45 — Evidence in support of opposition — Time mandatory —
Held: Sub-rule (1) uses the language 'shall' and sub-rule (2) deems the opposition abandoned on default; the intention of the Legislature is that the two months from service of the counterstatement be strictly adhered to, so compliance is mandatory and not directory. (¶12, 14)
Trade Marks Act, 1999 — s.131 — Trade Marks Rules, 2017 — r.109 — Discretionary power to extend time —
Held further: Section 131 and Rule 109 employ the language 'may' and confer only a discretionary power to extend time; that power does not reach Rule 45, which itself prescribes the time limit and the consequence of default. (¶13, 14)
Trade Marks Act, 1999 — s.47 — s.57 — Opposition abandoned — Remedy of the opponent —
Held further: An opponent who has neither filed evidence nor relied on the contents of opposition within the period prescribed is deemed to have abandoned his opposition, and his remedy thereafter is under Section 47 or Section 57. Letters patent appeal allowed. (¶14)
In the Court's own words
Paragraph 13Though the learned counsel for the first respondent contended that Section 91 of the Trade Marks Act, 1999 gave power to file appeal challenging the order passed under this Act, for which the learned counsel for appellant replied that prior to the amended 2017 Rules, the position was different. Now under the amended Trade Marks Rules, 2017, Rule 45 is very clear and it mandates the parties to adhere to the rules, failing which would lead to abandonment and therefore the power under Section 131 cannot be exercised and even Rule 109 also uses the language that only if the Registrar is satisfied, he may extend the time. Though the learned single Judge, exercising the power under the Intellectual Property Division, set aside the order passed by the Assistant Registrar, the main contention of the learned counsel for the appellant is that no appeal lies against the order rejecting an application for extension of time under Section 131 of the Trade Marks Act, 1999 read with Rule 109 of the Trade Marks Rules, 2017 or even under Rule 45 of the Trade Marks Rules, 2017 read with Section 21 of the Trade Marks Act, 1999. In fact, Rule 45(1) does not provide for an extension of time, unlike Rule 50 of the 2002 Rules. In this context, Rule 45 of the Trade Marks Rules, 2017 is extracted hereunder:- “45. Evidence in support of opposition.--(1) Within two 19 months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery. (2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.” (emphasis supplied)
Paragraph 14A plain reading of sub-rule (1) of Rule 45 would show that in three places the language used is only ‘shall’ and further in sub-rule (2) of Rule 45, the language used is ‘shall be deemed to have abandoned his opposition’. Therefore, 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. 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. Rather in 20 Section 131, the language used is ‘may’, thereby a discretionary power is conferred on the Registrar to extend the time if he is satisfied with the sufficient cause. Similarly, Rule 109 also employed the language ‘may’ and conferred discretionary power on the Registrar for extending the time, if the application is made under Section 131 (not being a time expressly provided in the Act or prescribed by rule 85 or by sub-rule (3) of rule 86 or a time for the extension of which provision is made in the rules), but not under Rule 45 prescribing the time limit for compliance and in default thereof, the consequences thereto in express terms. In this case, 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) of the Trade Marks Rules, 2017. While exercising discretionary power, there is no arbitrariness in rejecting the request made by the first respondent. Further the first respondent has got remedy under Section 47 or Section 57 of the Trade Marks Act. However, the learned single Judge has failed to consider the mandatory provisions of Rule 45 of the Trade Marks Rules, 2017 and proceeded to set aside the order dated 08.05.2018 passed by the Assistant Registrar, which warrants interference. Accordingly, the order passed by the learned single Judge is set aside and the letters patent appeal 21 stands allowed. Consequently, the connected CMP is closed. No order as to costs. (P.VELMURUGAN J.) (K.GOVINDARAJAN THILAKAVADI J.) 30-07-2026
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