A brand’s reputation often crosses a border before its trademark filings do. Consider a hypothetical. An established Indian restaurant chain, widely known among Indian residents of the UAE and among UAE visitors to India, plans its first outlet in a Dubai mall. Before signing the lease, it discovers that a former franchise partner has applied to register the chain’s name in the UAE. The chain has never traded in the UAE and holds no UAE registration.
Whether the chain can stop that application depends less on how famous it is than on what it can prove, to whom, and by when. Both India and the UAE protect well-known trademarks beyond the ordinary limits of registration, but through different mechanisms. India allows a proprietor to obtain formal recognition from the Trade Marks Registry, followed by entry on a published list. The UAE sets statutory criteria for well-known status but provides no equivalent standing recognition: status is assessed when the trademark authority, the grievance committee or a court decides a particular dispute. That difference shapes when evidence must be gathered, which deadlines apply and which remedies are realistic.
Why the India–UAE Comparison Matters
The India–UAE Comprehensive Economic Partnership Agreement (CEPA), signed on 18 February 2022 and in force from 1 May 2022, covers intellectual property alongside trade in goods, services and investment. In the same period, the UAE replaced its 1992 trademark law with Federal Decree-Law No. 36 of 2021 on Trademarks, in force from 2 January 2022, and joined the Madrid Protocol. As more Indian and UAE brands enter each other’s markets, frequently through franchisees and distributors, the opportunities for conflicting filings increase.
The International Starting Point
Both systems implement the same treaty obligations. Article 6bis of the Paris Convention requires member states to refuse or cancel the registration of, and prohibit the use of, a mark that reproduces, imitates or translates a mark considered well known in that country, where it is used for identical or similar goods and is liable to create confusion. It allows at least five years from registration for a cancellation request and sets no time limit where the conflicting mark was registered or used in bad faith. Article 16(2) of the TRIPS Agreement extends this protection to services and requires account to be taken of knowledge of the mark in the relevant sector of the public, including knowledge obtained through promotion. Article 16(3) extends protection for registered well-known marks to dissimilar goods and services, provided that use would indicate a connection with the owner and the owner’s interests are likely to be damaged.
India and the UAE are both parties to the Paris Convention and members of the World Trade Organization. Each has built on these minimum standards differently, as the rest of this article shows.
Well-Known Trademarks in India
Definition and statutory factors
Section 2(1)(zg) of the Trade Marks Act, 1999 defines a well-known trade mark by reference to the substantial segment of the public that uses the relevant goods or receives the relevant services. The mark must be so known to that segment that its use on other goods or services would be likely to be taken as indicating a connection with the proprietor.
Section 11 of the Act sets out how that status is assessed. Section 11(6) directs the Registrar to consider, among other things, knowledge or recognition of the mark in the relevant section of the public, including knowledge in India obtained through promotion; the duration, extent and geographical area of use and of promotion; the duration and geographical area of registrations and applications, to the extent they reflect use or recognition; and the record of successful enforcement, in particular recognition as well-known by a court or Registrar. Section 11(7) identifies the relevant section of the public by reference to actual or potential consumers, persons in the distribution channels and business circles dealing with the goods or services. Section 11(9) provides that the Registrar shall not require, as a condition, that the mark has been used or registered in India, that an application has been filed in India, that the mark is well known or registered in any other jurisdiction, or that it is well known to the public at large in India.
Two consequences follow. A foreign brand can qualify without any Indian registration or sales. But its evidence must still show recognition among the relevant Indian public: fame abroad matters only to the extent that it reached that public. For a fuller treatment of the factors and the evidence that supports them, see our guide to protecting and enforcing well-known trademarks in India.
Recognition by the Registrar under Rule 124
Before the Trade Marks Rules, 2017, well-known status in India came almost entirely from court judgments. Rule 124 introduced an administrative route. Any person may request the Registrar to determine a mark as well-known by filing Form TM-M through the IP India portal, with a statement of case, supporting documents and the official fee of ₹1,00,000 prescribed in the First Schedule (see the IP India fee schedule). The Registrar applies sections 11(6) to 11(9) and may call for further documents.
The procedure has two stages that are often conflated. Before making a determination, the Registrar may invite objections from the general public, to be filed within thirty days of the invitation (Rule 124(4)). Only if the mark is then determined to be well-known is it published in the Trade Marks Journal and included in the Registry’s list of well-known trademarks (Rule 124(5)). Inclusion is not permanent in every case: under Rule 124(6), the Registrar may remove a mark found to have been erroneously or inadvertently included, or whose inclusion is no longer justified, after giving the party concerned a hearing.
Recognition by the courts and the Tata SIA decision
Courts may also determine that a mark is well-known, typically in infringement or passing-off proceedings. Recent Delhi High Court examples include the declaration of HALDIRAM and its oval device for food items, restaurants and eateries in Haldiram India Pvt Ltd v Berachah Sales Corporation (CS(COMM) 495/2019, judgment of 2 April 2024; see also our analysis of the Haldiram decision), and of the NUTELLA marks in Ferrero SpA v M.B. Enterprises (CS(COMM) 593/2021, judgment of 28 July 2025), discussed in our note on NUTELLA’s recognition as a well-known trademark. Both declarations were made in proceedings in which the defendant did not appear or stopped appearing, which is relevant when assessing the weight such a declaration may carry in contested proceedings elsewhere.
The relationship between a court declaration and the Registry’s list was considered in Tata SIA Airlines Ltd v Union of India (W.P.(C)-IPD 64/2021, 2023:DHC:3659, decided 25 May 2023). The Delhi High Court held that section 11(8) and Rule 124 do not conflict. Where a court has determined a mark to be well-known, the Registrar cannot review or re-determine that status, and the Rule 124 steps of calling for documents and inviting public objections do not apply (paras 26 and 36). Rule 124 nonetheless governs publication and inclusion in the list, so the proprietor must still file Form TM-M and pay the prescribed fee (paras 37 and 40). A court declaration settles the question of status; entry on the Registry’s list is a separate administrative step.
Trans-border reputation: Whirlpool and Prius
Indian law has long accepted that reputation can reach India before a business does. In N.R. Dongre v Whirlpool Corporation, Whirlpool brought a passing-off action in the Delhi High Court and obtained a temporary injunction (single judge, 31 October 1994; upheld by the Division Bench, 21 April 1995). Its Indian registration had lapsed in 1977 for non-renewal, which the courts did not treat as abandonment, and it had continued to publicise the mark in publications with wide circulation in India. The Supreme Court dismissed the appeal on 30 August 1996 ((1996) 5 SCC 714), declining to disturb those findings at the interlocutory stage.
The Supreme Court later marked the limits of that principle in Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd (Civil Appeal Nos 5375–5377 of 2017, decided 14 December 2017). Applying the territoriality principle, the Court held that a claimant in passing off must show that its goodwill and reputation had spilled over into the Indian market by the relevant date. Toyota could not show that the PRIUS mark had acquired that goodwill in India before the defendants adopted it in 2001, when the car had not been launched in India and Indian advertising was limited.
Both were passing-off actions rather than determinations of well-known status, but they set the evidential standard: reputation must be proved in India, at the relevant date, with evidence attributable to the Indian market.
What well-known status does and does not provide
Recognition as a well-known trademark is a finding about the strength of a mark’s reputation. It is not in itself a cause of action, and its effect depends on the proceeding in which it is relied on.
At the registration stage, section 11(2) bars registration of an identical or similar mark for dissimilar goods or services where the earlier mark is well known in India and use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. Section 11(10) requires the Registrar, when considering applications and oppositions, to protect well-known marks against identical or similar marks and to take bad faith into account.
In infringement proceedings, section 29 protects registered marks. Section 29(4) extends infringement to the use of an identical or similar mark on dissimilar goods or services, but only where the registered mark has a reputation in India and the use, without due cause, takes unfair advantage of or is detrimental to its distinctive character or repute. Each element must be proved in the case. For an unregistered mark, section 27(1) bars an infringement action; the proprietor’s remedy is passing off, which section 27(2) preserves and which requires proof of goodwill, misrepresentation and damage.
A Rule 124 recognition or a court declaration is therefore strong evidence in each of these settings, but the brand owner must still satisfy the elements of the particular claim. How Indian courts assess similarity itself is illustrated in our analysis of deceptive similarity in the PROTIFIX cancellation.
Well-Known Trademarks in the UAE
The legal framework and the authorities
UAE trademarks are governed by Federal Decree-Law No. 36 of 2021 and its Executive Regulations, issued by Cabinet Resolution No. 57 of 2022. The Decree-Law defines “the Ministry” as the Ministry of Economy; on 20 June 2025 the UAE Government announced that it would be renamed the Ministry of Economy and Tourism. The Ministry examines, publishes and registers trademarks and decides oppositions and most cancellation requests. Its decisions may be challenged before the Trademarks Grievances Committee and then before the Federal Court of Appeal, which the Decree-Law designates as the competent court. An overview of the wider regime is available in our article on UAE intellectual property law.
Article 4: criteria and scope of protection
Article 4 of the Decree-Law does three distinct things, and they should be read separately.
First, it sets the criteria for well-known status. Account is taken of the extent to which the mark is known to the relevant public as a result of its promotion, the period of its registration and use, the number of countries in which it is registered or well known, its value, and the extent of its impact on the promotion of the goods or services it distinguishes.
Secondly, for identical or similar goods and services, a well-known mark whose reputation has extended beyond the borders of the country in which it was registered may not be registered in the UAE unless the application is made by its owner or with the owner’s approval.
Thirdly, for goods and services that are not identical or similar, registration is barred “in the following two cases”: where use of the mark would indicate a connection between those goods or services and the owner of the well-known mark, and where its use would be likely to harm the owner’s interests. The two cases are set out as separate items (a and b) with no connecting word, in both the Arabic and the English text. Neither text says whether they are alternatives or cumulative, so the point should not be assumed in the claimant’s favour. Article 16(3) of TRIPS requires both a connection and likely damage, so until the point is settled a claimant should prepare evidence of both.
Article 3 reinforces these rules by listing copies, imitations and translations of a well-known mark among the marks that cannot be registered, whether for similar goods and services (Article 3(13)) or for dissimilar ones (Article 3(14)).
How status is determined in practice
Neither the Decree-Law nor the Executive Regulations provide a procedure, comparable to Rule 124, for a proprietor to apply for recognition as well-known or for entry on a published list, and no Ministry list of well-known marks was identified at the time of writing. Article 4 is instead applied when a specific question has to be decided. That may happen when the Ministry examines an application; when a third party objects to a published application, which must be done within 30 days of publication in the Ministry’s bulletin (Article 15 of the Decree-Law and Article 7 of the Executive Regulations); when a cancellation request is made under Article 24; or when a court hears an infringement claim. Each of these is a determination for the purposes of that matter. A finding in one case does not create a standing designation, although it is likely to be useful evidence in the next.
Prior use is a separate ground
Prior use and well-known status are distinct grounds under UAE law and depend on different evidence. Article 18(1) treats the person who registers a mark as its owner and provides that ownership may not be disputed once the mark has been registered and used continuously for at least five years from registration without any action being brought against it, unless bad faith is proved. Article 18(2) allows a person who used the mark before the person in whose name it is registered to request the Ministry to cancel that registration within five years of the registration date, unless the earlier user expressly or implicitly consented to the registrant’s use. The provision does not state expressly where the earlier use must have taken place, so it is not settled whether use outside the UAE, or UAE-directed online use, can qualify.
A prior-use claim turns on evidence of earlier use of the mark. A well-known claim under Article 4 turns on evidence of reputation, which can exist without any trading in the UAE. A business may have one without the other, and a successful prior-use claim is not authority that the mark is well known.
The five-year periods under Articles 18 and 24
The Decree-Law contains several five-year periods. Each serves a different function, and none operates as a general limitation period for all trademark challenges:
- Article 18(1): the registrant’s ownership becomes indisputable after five years of registration and continuous use without any action being brought, unless bad faith is proved.
- Article 18(2): a prior user’s cancellation request must be made within five years of the registration date, and the prior user’s consent to the registrant’s use bars the claim.
- Article 24(2): the owner of a well-known mark may request cancellation of a similar mark within five years of its registration, unless the registrant is shown to have acted in bad faith, in which case that five-year limit does not apply.
- Article 24(3): any interested party may request cancellation of a mark that has not been used for five consecutive years, subject to an exception for circumstances that prevented use.
These periods run from registration, not from the date on which the brand owner learns of the conflicting mark. The window for opposing a published application is far shorter: 30 days. Separately, Article 24(4) allows the Ministry to strike off a mark registered in violation of the Decree-Law, on its own initiative or at the request of an interested party, and states no time limit, and no authority was identified on whether it can be used against a mark registered in breach of Articles 3(13)–(14) or 4 once the Article 24(2) period has expired, so that route should not be relied on without advice.
Enforcing registered rights without a local presence
Once a mark is registered in the UAE, its owner can enforce it against local use without having a physical presence in the country. The Abu Dhabi courts have restrained a local retailer’s use of an online-only international brand’s registered marks, and the Court of Cassation dismissed the retailer’s appeal on procedural grounds, as discussed in our note on trademark protection for online-only brands. That decision concerned infringement of registered marks rather than well-known status, but it illustrates why early registration remains the most direct route to enforcement in the UAE.
India and the UAE Compared
| India | UAE | |
| Main provisions | Trade Marks Act, 1999, ss 2(1)(zg), 11(2), 11(6)–(10), 27, 29(4); Trade Marks Rules, 2017, r 124 | Federal Decree-Law No. 36 of 2021, arts 3(13)–(14), 4, 18, 24; Cabinet Resolution No. 57 of 2022 |
| Route to recognition | On request to the Registrar (Form TM-M, ₹1,00,000), or by a court in proceedings | Assessed by the Ministry, Grievances Committee or courts within a specific matter |
| Standing effect | Entry on the Registry’s published list; a court determination binds the Registrar (s 11(8)) | No standing designation; a prior finding is evidence in later matters |
| Local use or registration needed for status | No (s 11(9)), but recognition among the relevant Indian public must be shown | Not required by art 4; reputation must extend beyond the country of registration |
| Identical or similar goods and services | Conflicting registration refused (s 11) | Registration barred without the owner’s application or approval (art 4) |
| Dissimilar goods and services | Registration refused under s 11(2); infringement of a registered mark with an Indian reputation under s 29(4) | Registration barred where use would indicate a connection with the owner and where it would harm the owner’s interests (art 4(3); the text does not say whether both are required) |
| Claims open to an owner without local registration | Passing off (s 27(2)); no infringement action (s 27(1)) | Prior-use cancellation (art 18(2)); well-known cancellation (art 24(2)) |
| Key time limits | Objections to a Rule 124 request: 30 days from invitation; acquiescence for five years in the use of a later registered mark bars a challenge, unless that mark was not applied for in good faith (s 33) | Opposition: 30 days from publication; cancellation: generally 5 years from registration (arts 18(2), 24(2)), subject to the bad-faith exception in art 24(2) |
The Madrid Protocol Does Not Confer Well-Known Status
India has been a member of the Madrid Protocol since 8 July 2013 and the UAE since 28 December 2021. The Protocol allows a single international application, based on a home application or registration, to designate multiple member countries. It is a filing system. It does not confer well-known status, and a determination in one country does not bind another: each designated country examines the designation under its own law.
International registrations are nonetheless relevant evidence. Section 11(6) in India and Article 4 in the UAE both take account of registrations in other countries. For the restaurant chain in our example, a Madrid designation of the UAE filed before expansion would have put the chain’s own UAE application on file, and potentially a UAE registration, before the franchise relationship ended.
Back to the Hypothetical: Practical Choices in the Corridor
The restaurant chain’s options in the UAE depend on timing and on evidence.
If the former franchisee’s application has been published but not yet registered, the chain can oppose it within 30 days of publication. Its main grounds are likely to be Articles 3(13) and 4. It would need to show that its mark is known to the relevant public in the UAE, which here means consumers of restaurant services in the UAE. Useful evidence would include UAE-directed advertising, social-media reach among UAE audiences, coverage in media circulating in the UAE, visits by UAE residents to its Indian outlets and registrations in other countries. Sales and fame in India are relevant only to the extent that they reached that public.
If the mark has already been registered, the chain may request cancellation under Article 24(2) within five years of registration, or after that period if it can prove bad faith. The franchise history is relevant here: a former franchisee that registers its franchisor’s mark may find it hard to show good faith, although bad faith must still be proved on the facts, and the franchise agreement may also provide contractual remedies. A prior-use claim under Article 18(2) is a weaker fit, because the chain has not used the mark in the UAE and the provision does not say whether use elsewhere counts. That is the practical difference between reputation and local use.
The position is broadly reversed for a UAE brand facing a conflicting filing in India. It could oppose under sections 11(2) and 11(10), rely on trans-border reputation in a passing-off action, or seek recognition under Rule 124 if its Indian evidence supports it.
Several lessons follow. Register core marks in each market before entering it, rather than relying on reputation. Deal expressly with trademark ownership, filing restrictions and post-termination obligations in franchise, distribution and licensing agreements. Monitor the Indian Trade Marks Journal and the UAE Ministry’s bulletin, given the 30-day opposition window in the UAE. And treat recognition in one country as evidence for the other, not as a substitute for it.
Building the Evidence File
The evidence that supports a Rule 124 request in India overlaps substantially with what is needed to oppose or cancel a conflicting UAE mark. It is most persuasive when it is dated, attributable to the relevant market and created at the time rather than reconstructed for a dispute. A practical evidence file includes:
- sales figures and advertising expenditure, broken down by country and year;
- dated advertising and media coverage, with evidence of where it circulated or was viewed;
- website, social-media and app analytics by geography;
- domain registrations and their dates;
- invoices and shipping records showing first use in each market;
- registrations and applications in other countries, including Madrid designations;
- court orders, Registry or Ministry decisions and settlements from earlier enforcement; and
- franchise, distribution and licensing agreements, including their trademark ownership and quality-control terms.
It helps to keep evidence of reputation (who knows the mark, and where) separate from evidence of use (where and when the mark was used in trade). Indian and UAE decision-makers may require both, for different claims.
Conclusion
India and the UAE start from the same treaty obligations but give well-known marks different procedural form. In India, a proprietor can convert reputation into standing recognition under Rule 124, although that recognition must still be deployed through the specific statutory or passing-off claim in issue. In the UAE, Article 4 is applied case by case, within deadlines that run from publication and registration rather than from discovery. In both countries, registration remains the most reliable protection, and a well-known claim succeeds or fails on evidence assembled before it was needed.
Frequently Asked Questions
Can an Indian business with no operations in the UAE challenge a conflicting UAE trademark application or registration?
Potentially, yes. Under Federal Decree-Law No. 36 of 2021, the owner of a well-known mark can oppose a conflicting application within 30 days of its publication, or request cancellation of a conflicting registration within five years of its registration date, with no five-year limit where bad faith is proved (Article 24(2)). The Indian business must show that its mark is well known to the relevant public in the UAE under the Article 4 criteria; reputation confined to India is not enough.
Are prior use and well-known trademark status the same under UAE trademark law?
No. Prior use is a ground under Article 18 of Federal Decree-Law No. 36 of 2021 that allows the first user of a mark registered by someone else to seek cancellation within five years of registration. Well-known status under Article 4 depends on reputation among the relevant public and can exist without any use in the UAE. Each ground requires different evidence.
Does recognition as a well-known trademark in India automatically give the owner infringement rights?
No. Recognition, whether under Rule 124 of the Trade Marks Rules, 2017 or by a court, establishes the status of the mark but is not itself a cause of action. The owner must still bring an infringement claim under section 29 of the Trade Marks Act, 1999, which applies to registered marks, or a passing-off action for an unregistered mark, and satisfy the elements of that claim.
Can a trademark be recognised as well-known in India if it is not registered or used in India?
Yes. Section 11(9) of the Trade Marks Act, 1999 provides that use, registration or an application in India is not a condition for recognition. The proprietor must still show that the mark is known to the relevant section of the Indian public, as the Supreme Court’s decision in the Toyota PRIUS case illustrates.
What is the procedure and official fee for well-known trademark recognition in India under Rule 124?
A request is filed on Form TM-M with a statement of case, supporting evidence and an official fee of ₹1,00,000. The Registrar may invite public objections within thirty days before deciding; if the mark is determined to be well-known, it is published in the Trade Marks Journal and added to the Registry’s list. The same form and fee apply where a court has already declared the mark well-known, although the Registrar then does not call for documents or invite objections.
Does the UAE maintain an official list of well-known trademarks?
No, not under the current law. Federal Decree-Law No. 36 of 2021 and its Executive Regulations do not provide a procedure for applying for well-known recognition or for a published list comparable to India’s. Well-known status is assessed by the Ministry on a case by case basis, by the Trademarks Grievances Committee or the courts in the specific matter before them.
Does recognition as a well-known trademark in India, or a Madrid Protocol registration, make a mark well-known in the UAE?
No. Well-known status is determined separately under each country’s law, and the Madrid Protocol is a filing system that does not confer it. An Indian recognition and international registrations are, however, relevant evidence under the Article 4 criteria in the UAE.
Part of ATB Legal’s Intellectual Property practice.