"USE IN WEBSITE" IS NOT THE SAME WITH "USE IN COMMERCE" 

By: Dr. Iman Sjahputra, SH, Sp.N., LL.M

In the global trading, the presence of a trademark in a product is very important because a trademark is not only a sign, but it is also a symbol of reputation and prestige. 

Why a trademark can be associated with prestige?  It is a common thing if someone wants to buy goods, for example a sport shoes, then it is definitely their mind will be drawn to shoes trademark such "Nike" and "Adidas" in which dominating in the sports shoes.

Then why a trademark could also symbolize a reputation?  It is because a well-known trademark will definitely maintain its quality.  The more famous of a trademark it is certainly the quality will be well maintained as well, because the well-known trademarks will always innovate so it can compete in the wide market.  Innovation will stimulate the well-known trademarks to always be evolving, both in terms of design and quality.  Famous trademark certainly has the motto, "Always come with trendy and newest products to always be in the front line."

That is why the well-known trademark is always inviting the consumers to buy the products of its famous trademark.  So it is very normal if there is a competition between the famous trademarks themselves because all of them want to keep its reputation.  For example is the relentless competition between the shoes trademarks of "Nike" and "Adidas".  These sport brand shoes are very famous trademarks, so we can always find it in the in the various corners of the up to bottom scales shopping center either in various parts of the city or the world.

"Adidas" trademark was once founded by a Germany named Adolf "Adi" Dassler, in 1948, with the power of three slashes logo has reached the fortune of at least 11.65 billion Euros, and nowadays has becomes a giant in the field of sports shoes, sports wears and its apparels.  Not so much different, as well as “Nike” from U.S. which has become a giant since its introduction in 1967 by Knight and Bowerman.  Its "Moon Shoes" sport shoes was promoted for use by the Olympic athletes in Eugene, Ore, in 1972, has become a legendary record especially for its athletes.

Thus the recognition of the existence of these two trademarks has never been argued in either the real and virtual world.  In the real world, “Adidas" and "Nike" trademarks certainly have been registered in almost all the countries in the world and its products have also been used in the trading world.  So it is almost impossible if these two trademarks "lost" its legal protection in the trademark law because it is no longer used in world trade (non-use in commerce), it means legal aspects of the trademark that requires "the use" of the existence of a trademark does not need to be worried anymore.

But how is about in the virtual world of the internet?  What are the criteria for "use" and "non-use"?  Can a website that displays the trademark "Adidas" and "Nike" that can be accessed in any country be categorized as "use" in the trademark legal paradigm?  For example, the “Adidas” and “Nike” trademarks posted on the website and can be accessed in Indonesia, but the product actually has not yet been circulated can be qualified as the use in trademark paradigm, especially if the product can be ordered through online.

Shall in principle "actual use in commerce" under the trademark law be interpreted that the "use" must be in a physical presence in the form of a tangible product in the market in a territory?  Beside that, does the website which displaying a new product can be called as a window or shorefront only?  That provides an opportunity for potential buyers to view, search, select and take steps whether or not to buy the offered products.  So the role of website in this case is as an advertising medium offers only.  The adage is that an offer is not legally binding.

Therefore we should not assume that a website that can be accessed in a certain territory has shown that the trademark has been known and used in such certain territory.  By law, the trademark is already existed and can be viewed and read on the internet, but the existent of such trademark in the internet is for advertising only.  The display on the website does not mean that the trademark is in fact already used in commerce.  So it does not mean that if a person who purchase a product overseas, for example the hand bag under “LV” trademark in Singapore, then bring the hand bag into Indonesia, then it can be considered that the trademark has been used in commerce in Indonesia.

It is a very different case if in fact the “LV” hand bag in reality has its outlet in Indonesia for trading.  If this is the case then it can be considered that “LV” hand bag trademark has been "in use" in Indonesian trading.  Meanwhile website is not a real market, because the displayed products in a website only implies to promotion and advertisement for consumers.  The point is that product trademark in a website does not shows the "actual use" as regulated under the trademark law.

* Writer is an expert on Intellectual Property Rights (IPR) domiciled in Jakarta.


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