Convention Countries, Priority and Reciprocity
Chapter Eighteen
Syllabus topic 1.2, "International and National Laws relating to trademarks"
Pages 82 to 85 of 742
In one line
A foreign applicant who has filed at home may claim that filing date in India if he applies here within six months, and a country that will not do the same for Indians gets nothing.
In the wording a student can write in an exam: section 154 implements the right of priority of Article 4 of the Paris Convention, allowing the Central Government to declare a country, group of countries, union of countries or intergovernmental organisation a convention country, and giving an applicant from such a country six months from his home filing in which to apply in India and have his Indian registration dated as of the home filing; section 155 is the reciprocity provision, denying the benefits of the Act to nationals of a specified country that does not accord Indian citizens the same rights as its own.
Why these two sections exist
Section 154 is India keeping a treaty promise. Paris Article 4C(1) gives a trade mark applicant six months. Section 154(2) gives exactly six months. Article 4A(1) says the priority is for the purpose of filing in the other countries; section 154(2) does it by deeming the Indian registration to be dated as of the foreign application.
Section 155 is India's leverage. Paris obliges national treatment among Union countries, so between Union members section 155 is largely theoretical. It bites where the country in question is outside the Union and outside the WTO, or where it discriminates in fact.
Section 154 broken down
Sub-section (1), the declaration. With a view to the fulfilment of a treaty, convention or arrangement with any country, or a country which is a member of a group of countries or union of countries or intergovernmental organisation outside India, which affords to citizens of India similar privileges as granted to its own citizens, the Central Government may by notification declare that country, group, union or organisation a convention country for the purposes of the Act.
Three things there. The declaration is by notification in the Official Gazette. The condition is that the country affords Indian citizens similar privileges. And the Act contemplates not only countries but groups, unions and intergovernmental organisations, which is what allows a regional office to be designated.
Sub-section (2), the priority. Where a person has made an application for registration of a trade mark in a convention country, and that person, or his legal representative or assignee, makes an application for registration of the trade mark in India within six months after the date on which the application was made in the convention country, the trade mark shall, if registered under this Act, be registered as of the date on which the application was made in the convention country, and that date shall be deemed for the purposes of the Act to be the date of registration.
Convention Countries, Priority and Reciprocity
Sub-section (3), multiple foreign filings. Where applications have been made in two or more convention countries, the six months is reckoned from the date of the earlier or earliest of those applications.
Sub-section (4), a limit that catches candidates out. Nothing in the Act shall entitle the proprietor of a trade mark to recover damages for infringement which took place prior to the date of application for registration under this Act. So the priority date fixes the date of registration, but it does not reach back to make an earlier infringement actionable in damages.
Section 155 broken down
Where a specified country does not accord to citizens of India the same rights in respect of the registration and protection of trade marks as it accords to its own nationals, no national of that country shall be entitled, either solely or jointly with any other person:
- (a) to apply for the registration of, or be registered as the proprietor of, a trade mark;
- (b) to be registered as the assignee of the proprietor of a registered trade mark; or
- (c) to apply for registration or be registered as a registered user of a trade mark under section 49.
Note the three limbs. They cover the three ways a foreign national could otherwise get on to the register: as an applicant or proprietor, as an assignee, and as a registered user.
Note also the trigger. The country must be specified by the Central Government by notification in this behalf. Section 155 is not self-executing.
How the claim is made
Rule 24 of the Trade Marks Rules, 2017 governs an application under a convention arrangement. Where a right to priority is claimed by reason of an application for protection in a convention country, the application must state that fact and the date of the convention application, and the applicant must file a certified copy of the convention application, with a translation into English or Hindi where it is in another language, within the time the rule allows.
In practice the priority claim is made in the Indian application itself, and the certified copy follows. An applicant who does not claim priority at filing cannot ordinarily add it later.
Worked example
Hiroshi Tanaka files an application for the mark KOMOREBI for tea in Japan on 3 February 2026. Japan is a convention country for the purposes of the Act.
He files in India on 15 July 2026, claiming priority. That is within six months of 3 February. If the Indian mark proceeds to registration, section 154(2) makes it registered as of 3 February 2026, and that date is deemed to be the date of registration.
Convention Countries, Priority and Reciprocity
Why it matters. On 2 April 2026 an Indian trader, Vikram Shah, filed KOMOREVI for tea. Without priority, Vikram is the earlier applicant and Hiroshi's mark meets a section 11(1) objection. With priority, Hiroshi's effective date is 3 February and Vikram's application is the later one.
Change one fact. Hiroshi also filed in Korea on 10 January 2026. Under section 154(3) the six months runs from the earliest of the foreign applications, that is 10 January, so his Indian application had to be filed by 10 July. Filing on 15 July, he loses the priority altogether.
Change another. Hiroshi's Indian registration is granted in 2028 with a date of 3 February 2026. He discovers that Vikram sold tea under KOMOREVI from March 2026. Can he recover damages for that period? No. Section 154(4) says nothing in the Act entitles a proprietor to recover damages for infringement which took place prior to the date of application for registration under this Act, which was 15 July 2026.
And a reciprocity problem. Suppose a country, State Z, is notified under section 155 as one that does not give Indians the same rights as its own nationals. A national of State Z may not apply for registration, may not be registered as an assignee, and may not be a registered user under section 49. He is not disabled from suing in passing off, because that action does not depend on the Act.
Sections 154 and 155 compared
| Section 154 | Section 155 | |
|---|---|---|
| Purpose | To give effect to Article 4 priority | To answer discrimination against Indians |
| Trigger | Notification declaring a convention country | Notification specifying a country that discriminates |
| Effect | An Indian registration dated as of the foreign filing | A national of that country may not apply, be registered as proprietor or assignee, or be a registered user |
| Period | Six months, from the earliest foreign application | None; it operates while the notification stands |
| Limit | No damages for infringement before the Indian filing date, s.154(4) | Does not bar an action for passing off |
What it does NOT mean
Priority is not registration. The Indian application is examined on its merits like any other, and may be refused under section 9 or section 11. What priority changes is its date.
Priority is not automatic. It must be claimed, and the formalities under rule 24 must be complied with.
Section 154(4) does not deny an injunction. It denies damages for infringement before the date of the Indian application. An injunction and the other reliefs under section 135 are not affected, and a passing off claim for the same period is untouched.
Convention Countries, Priority and Reciprocity
And section 155 is not a general power to exclude foreigners. It operates only against nationals of a country specified by notification for want of reciprocity, and only in the three respects its clauses name.
Quick revision
s.154(1): the Central Government may, by notification, declare a country, group of countries, union of countries or intergovernmental organisation which affords to citizens of India similar privileges to be a convention country.
s.154(2): six months from the convention application; the Indian registration is then dated as of the convention filing date, and the applicant may be the original applicant, his legal representative or assignee.
s.154(3): where there are several convention applications, the six months runs from the earliest.
s.154(4): no damages for infringement before the date of the application for registration in India.
s.155: where a specified country does not accord Indian citizens the same rights, its nationals may not (a) apply for or be registered as proprietor, (b) be registered as assignee, or (c) apply for or be registered as a registered user under s.49.
Rule 24 governs the claim and the certified copy of the convention application.
Test yourself
1. How long has a convention applicant to file in India, and from when does the period run? Six months, under section 154(2), from the date of the application in the convention country, and where there are applications in two or more convention countries, from the earliest of them under section 154(3).
2. What is the effect of a successful priority claim? The mark, if registered under the Act, is registered as of the date on which the application was made in the convention country, and that date is deemed for the purposes of the Act to be the date of registration.
3. Can a convention applicant recover damages for infringement occurring between his convention filing and his Indian filing? No. Section 154(4) provides that nothing in the Act entitles a proprietor to recover damages for infringement which took place prior to the date of the application for registration under the Act.
4. Who besides the original applicant may claim priority? His legal representative or assignee, in terms of section 154(2).
5. What three things may a national of a country specified under section 155 not do? Apply for the registration of, or be registered as the proprietor of, a trade mark; be registered as the assignee of the proprietor of a registered trade mark; and apply for registration or be registered as a registered user under section 49.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.