Authored By: Anagha Dinesan
Introduction
The sharp rise in online commercial platforms can be attributed to global digitalization. This rise also gave way to online trademark counterfeiting. Each country has its own commercial ecosystem and needs a corresponding trademark protection mechanism. This aspect is still evolving in India without any consolidated statutory framework. While India heavily depends on its judicial precedents for online trademark protection, the UAE (United Arab Emirates) has a much broader legal canvas for its prevention and safety. The global trade space of the UAE calls for a much more stringent trademark protection for it to sustain its credibility and reputation.
Trademark recognition can be traced back as early as the Paris Convention. The Convention balances national sovereignty with international coordination, forming the doctrinal basis for modern international trademark regimes, including the TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) and the Madrid Protocol. Both India and the UAE have been members of these international instruments, constantly fulfilling their obligations as member states. Despite shared international obligations, India and the UAE diverge significantly in how these standards are operationalised in the digital marketplace.
Domestic Legal Framework Governing Trademarks in India and the UAE
Legal Framework in India
The Trade Marks Act of 1999 serves as the primary legal framework for trademark protection in India, aligning national law with international commitments outlined in the Paris Convention and the TRIPS Agreement. Importantly, the Act offers protection for well-known trademarks, demonstrating India’s dedication to global trademark standards; however, it lacks a specific enforcement mechanism for their online protection. Indian trademark legislation acknowledges both statutory infringement and the common law action of passing off as distinct yet complementary means of safeguarding trademark rights. The dominance of judicial enforcement places the responsibility of adapting trademark law to digital environments on the courts, often leading to remedies that are time-consuming instead of establishing clear compliance standards.
A notable development is the codification of criteria and procedures for the determination of well-known trademarks, empowering the Registrar to declare such status based on specified evidentiary factors through the Trade Marks Rules, 2017.
Legal Framework in the United Arab Emirates
Unlike India, the UAE does not directly recognise passing off under its civil law system. The closest alternative can be found under their unfair competition law. The UAE only recognises registered trademarks under its legal structure. As a global trade hub, it demands a strict and vigorous trademark regime to protect businesses, attract foreign investors, and ensure fair competition.
The Federal Decree Law No. 36 of 2021 is the primary statute on trademarks in the UAE. It provides a comprehensive mechanism for trademark protection and enforcement. The statute recognises both conventional and unconventional marks. These unconventional marks accommodate a larger protectable subject and evolving branding practices.
Substantive protection is firmly granted to the registered proprietor by exclusive rights to prevent unauthorised use of identical or confusingly similar marks, embedding the likelihood-of-confusion test as the core infringement standard. Enhanced protection is further accorded to famous trademarks, extending safeguards even to dissimilar goods or services where dilution or unfair association may arise. The enforcement regime is notably robust, combining civil, administrative, border, and criminal measures. In addition, stringent criminal penalties for counterfeiting, unauthorised use, and trafficking in infringing goods signal strong deterrence. Overall, the law demonstrates a balanced integration of rights protection, procedural efficiency, and deterrent enforcement, reinforcing the UAE’s position as a secure jurisdiction for trademark owners.
Much like India’s Trade Mark Rules, the UAE Cabinet Resolution No. 57 of 2022 explains the procedural regulations that are essential to be complied with. It operationalises the UAE Trademarks Law by laying down detailed procedural rules. The Resolution strengthens transparency through mandatory publication and opposition mechanisms with a shorter window period and enhances enforcement through structured procedures for licensing and detailed customs-border measures. While India focuses more on opposition hearings and user-based claims, the UAE adopts a stronger administrative and customs-centric enforcement model, reflecting its global trade hub orientation.
Legal Recognition of Online Trademark Counterfeiting and the Liability of E-Commerce Platforms
The words “infringement” and “counterfeit” are most often used synonymously. All counterfeits are infringement but not all infringements are counterfeits. Counterfeit is an aggravated form of infringement. While infringement is “deceptively similar”, counterfeit is “substantially indistinguishable”.
E-Commerce Trademark Counterfeiting in India
India does not directly specify counterfeit in its trademark laws, but falsification in the statute best explains counterfeit. This helps in penalising trademark counterfeiting in India. Apart from this interpretation, the IT Rules of 2021 also provide a provision for countering trademark infringement. It mandates due diligence by intermediaries to observe trademark counterfeiting from their sellers. Intermediary liability remains contingent on actual knowledge, preserving safe harbour protections under the IT Act, unless the platform exercises active control over listings or transactions.
The judicial interpretation has made room for recognising trademark counterfeiting in India, most notably in Christian Louboutin SAS v Nakul Bajaj & Ors., where the Delhi High Court acknowledged the role and responsibilities of e-commerce platforms in trademark disputes.
E-Commerce Trademark Counterfeiting in the UAE
UAE recognises trademark counterfeiting through its statutes backed by strong administrative enforcement mechanisms. The UAE regulation of counterfeiting can be read from its Federal Decree No. 42 of 2023 to Combat Commercial Fraud. The statute, along with administrative regulations create a tight space for trademark counterfeits in the UAE. The law explicitly defines “counterfeit goods” as goods which bear, without permission, a trademark which is identical or similar to a legally registered trademark.
The Federal Decree No. 42 of 2023, read along with Federal Decree Law No. 36 of 2021, provides a strong and structured mechanism against counterfeiting. It criminalizes the entire counterfeit supply chain, prohibiting importation, exportation, production, sale, storage, transportation, and possession of counterfeit goods with hefty fines. The knowledge of the customer on counterfeiting does not exempt the provider from its liabilities. The Supreme Committee for Anti-Commercial Fraud coordinates federal and local enforcement, while managers face personal liability for organizational violations, ensuring accountability and deterring commercial fraud effectively.
A Comparative Study on E-Commerce Trademark Counterfeiting: India and the UAE
Regulatory Orientation and Policy Objectives in Trademark Enforcement
Trademark regulations across different jurisdictions are shaped by overarching policy objectives, including promoting investor security and protecting public and consumer interests. While some frameworks emphasize commercial certainty and efficient enforcement to enhance investment and market participation, others embed trademark protection within broader welfare-oriented regulatory goals. These varied viewpoints not only influence the crafting of legislation but also guide enforcement priorities in the realms of digital and e-commerce.
The influence of courts on trademark enforcement varies from one jurisdiction to another. In common law countries like India, judicial interpretations have played a significant role in adapting existing trademark principles to address new challenges posed by e-commerce. In contrast, the civil law legal system in the UAE operates within a more rigid statutory and administrative framework, where courts primarily focus on applying established standards rather than actively developing legal doctrine.
This critical difference impacts both the formulation and enforcement of laws. Similar disparities can be seen in the regulations concerning e-commerce trademark counterfeiting within these two jurisdictions. Each method is designed to align with its corresponding legal system to yield the most advantageous results, such as the relative emphasis on the protection of registered versus unregistered trademarks. This divergence has real-world consequences in e-commerce contexts, affecting both the accessibility and speed of enforcement actions against online trademark violations, including counterfeiting.
Judicial Development and Statutory Structuring of Online Trademark Law
The legal recognition of trademark counterfeiting in e-commerce in India can be analysed through judicial decisions. In the Christian Louboutin case, the brand sued “darveys.com” for selling counterfeit products, claiming trademark infringement. The Court ruled that e-commerce platforms involved in listings and pricing cannot claim immunity under the IT Act, establishing that such operators can be liable for trademark infringement.
In Puma SE v Ashok Kumar, Puma sued online sellers of counterfeit goods, and the Court found clear infringement in the unauthorized use of Puma’s trademarks. In Lifestyle Equities C.V. v Amazon Technologies Inc., the trademark owner accused Amazon’s Indian entities of trademark infringement, with the Supreme Court highlighting procedural issues that maintained the suspension of damages.
The UAE has effectively linked intellectual property rights awareness and enforcement, resulting in improved compliance and the need for organized standards in digital trademark disputes. The Dubai Court’s cancellation of a trade name in the Haji Nasser Trade Name Dispute reflected strict enforcement of a prior waiver, emphasizing that legal outcomes in UAE trademark cases often rely on formal agreements and experts rather than judicial decisions.
Use of Trademarks as Keywords and Metadata in Online Advertising
The employment of trademarks in metatags and keywords for search engine optimization has gained importance in e-commerce, as third parties capitalize on established brands to improve their search rankings and benefit from their reputation. These techniques enable online platforms and competitors to use third-party trademarks without authorization to draw traffic to their own websites, leading to significant concerns about trademark infringement.
In the case of Google LLC v DRS Logistics, the Delhi High Court ruled that using a registered trademark as a keyword, without any consumer confusion, dilution of the mark, or harm to its distinctiveness, does not automatically amount to trademark infringement. Trademark registration does not grant exclusive rights over search engine results stemming from queries that include the mark. Such an argument mistakenly presumes that a search engine operates as a directory service and overlooks the agency of internet users.
Indian courts recognize domain names as identifiers of sources that are eligible for trademark protection, as confirmed in Yahoo! Inc. v Akash Arora. Although the courts have acknowledged domain names under the concept of passing off, the lack of statutory guidelines for registrations made in bad faith requires a comprehensive framework focused on confusing similarity, bad faith, and the absence of legitimate interest.
In the Applebee’s case, the UAE Court of Cassation affirmed responsibility for post-termination trademark infringement based on digital behaviour rather than similarities in the marks. The former franchisee was found to have used the “APPLEBEES” trademark as a keyword on the Zomato platform to market a new brand, thereby misleading consumers and exploiting its goodwill. The Court upheld the conclusions of the expert committee and assigned joint and several liability for damages, which were calculated based on unpaid royalties.
This ruling expands trademark protection to encompass the use of metadata and keywords in platform-based commerce, recognizing backend digital associations as a type of actionable infringement. Furthermore, it illustrates the UAE judiciary’s formalist and expert-driven approach, where courts serve as adjudicators rather than creators of norms, in contrast to the more interventionist and purposive evolution of digital trademark law observed in India.
Conclusion
The e-commerce trademark counterfeiting in India and the United Arab Emirates shows that enforcement outcomes in digital markets depend more on institutional design than on the substantive scope of trademark rights. Although both jurisdictions operate under common international obligations, they regulate online counterfeiting through fundamentally different enforcement models.
India relies primarily on judicial interpretation to adapt trademark law to e-commerce. Courts have extended traditional principles to address platform-based infringement and intermediary conduct. This approach allows flexibility and contextual decision-making. However, the absence of a consolidated statutory framework for online trademark counterfeiting results in fragmented standards and delayed enforcement. Remedies remain largely reactive and case-specific, limiting their deterrent effect in large-scale digital markets.
The UAE operates under a model that is primarily based on statutes and enforced through administrative measures. Issues of counterfeiting are managed by specific legislative measures backed by robust administrative and customs enforcement. This structure facilitates prompt action and minimizes the need for new judicial interpretations. The role of the courts is limited to confirmation, where they implement established standards instead of creating new legal principles. Consequently, enforcement becomes quicker, more predictable, and in line with the UAE’s goal of ensuring investor confidence and commercial stability.
Effective regulation requires a balanced framework combining clear statutory standards, proportionate intermediary obligations, and targeted judicial oversight. The experiences of India and the UAE highlight how enforcement architecture directly shapes the effectiveness of trademark protection in digital marketplaces.
Bibliography
- Cabinet Resolution No. (57) of 2022 Concerning the Executive Regulations of Federal Decree by Law No. (36) of 2021 Concerning Trademarks
- Federal Law by Decree No. (42) of 2023 Concerning Anti-Commercial Fraud Federal decree
- The Information Technology Act, 2000
- The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021
- The Paris Convention for the Protection of Industrial Property of 1883
- The Trade Marks Act, 1999
- The Trade Marks Rules, 2017
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