'Benzoy the ultimate solution

Chat, Skype and Internet are fun! But not always! However, Benzoy presents the ultimate solution for making clear compromises with your children and making assure that they are carried out.'

A no pasaran for Microsoft who demanded injunctive relief on March 29, 2008 and obtained it today from the Presiding Judge. From a procedural perspective the Presiding Judge clarified that exceeding the allotted speaking time for parties to the proceedings (30 minutes for the opening speeches) is not tolerated. The Presiding Judge reflects in the decision all the topics that the defendant's attorney at law intended to deal with, and subsequently considers that he represented towards the attorney that he would not be able to read aloud the written pleadings and that he had to make a choice between the topics that could be dealt with within the time lock. As a consequence certain parts of the defence could not be taken into account and the fundamental principle of due process is applied that a defence which is not pleaded is not established. But because Unicaresoft had made it clear which defences it wanted to put forward and Microsoft had anticipated these defences in its opening speech, the Presiding Judge finally decided to deal with all defences raised by Unicaresoft. I shall only deal with a few of them in the following.

First the Presiding Judge deals with the alleged notoriety of the MSN trade mark and Unicaresoft's defence that MSN has become generic. The Presiding Judge finds that Unicaresoft does not contradict that MSN is an extremely well known. Instead Unicaresoft argues that the relevant public does not perceive the concept msn-ing as a distinctive sign for a Microsoft product, but as a full synonym for chatting. According to Unicaresoft MSN cannot qualify as a well known trade mark, because it has become generic. The Presiding Judge disagreed: the relevant public - which is estimated to be the public that uses a chatting program regularly - does not describe the activity of using such programs always as msn-ing, although it is recognized that it is often described msn-ing. Unicaresoft did not convince the Presiding Judge that the activity of working with MSN Messenger is (nearly) ever described as msn-ing. The Presiding Judge considers that it has become plausibe that working with the chat function of Hyves - a program with chat functionality that has a fair share in the Netherlands - is called hyv-ing, quacking or chatting. The use of msn-ing for working on Hyves is not obvious. Messenger and Hyves speak their own language; a user on Hyves can hyve with another Hyves user, but he cannot MSN without using MSN Messenger with a conversation partner that is present on MSN Messinger. The Presiding Judge finds evidence for this viewpoint in the introduction on Benzoy's website where the use of an instant messenger is mainly described as chatting while msn-ing is only used once as an alternative for chatting. Further, the Presiding Judge points out that even if msn-ing should be regarded as generic for chatting, this does not mean that the trade mark MSN has become a generic name.

The Presiding Judge rules that Unicaresoft uses the domain names in the course of trade and as trade marks: Unicaresoft's defense that the use of the domain names should be qualified as other use - no use to distinguish goods of services, in which case in the Benelux a trade mark infringement should be dealt with under the provision of Art. 2.20(1)(d) of the Benelux IP Treaty; a species of Art. 5 of the European Trade Mark Directive, which has no explicit counterpart in the CTMR - is overruled. msnlock is apparently used a trade mark.

With regard to the infringement question the Presiding Judge finds that the sign msnlock includes the well know trade mark MSN as distinctive element in combination with the descriptive element lock: thus the trade mark and the sign are similar. Furthermore there is a risk of confusion because the public might think that a product which is put on sale using msnlock is originating from Microsoft. The public might come to think this because the products for which the sign msnlock is used are identical or at least similar to a high degree compared with the products and services for which Microsoft registered MSN as a trade mark. The Benzoy product is complementary to the products offered for sale by Microsoft using MSN as a trade mark. Microsoft herself even offers parental care software for sale. Because MSN is a well know trade mark this might increase the risk of confusion. Conclusion: Unicaresoft infringes the MSN trade mark by using msnlock.

Unicaresoft's appeal to the ECJ's 2005 decision in Gillette/La-Laboratories (use of trade mark is necessary to indicate the intented purpose of the product) failed: the Presiding Judge ruled that this exception can only be relied on if use of the trade mark is the only way to inform the public with regard to the purpose of the product. The time lock product of Unicaresoft which is offered for sale using the trade mark Benzoy is intended to perform together with all kind of third party chatting programs. Unicaresoft failed to provide sufficient insight that the use of the msnlock domains is the sole means to put the Benzoy software on the market.

The defensc that Microsoft abused the MSN trade mark right by not proceeding against the use of for example msnslut, msnwhore, msnporn, msnsex, msnfuck, msngirl, msnboy and msndate in domains (discriminative use of the trade mark right) failed too: the Presiding Judge ruled that Microsoft is entitled to a certain agree to decide which trade mark infringements should be fight. Fighting all trade mark infringements would be impracticable. A trade mark owner is entitled to make an assessment whether it is opportune to fight an infringement. Part of this assessment is the harm that is suffered by Microsoft. The Presiding Judge finds that Unicaresoft itself has made it clear that Benzoy will be promoted by using the sign msnlock and concludes from this that this will lead to a decrease in exposure for - for example - the program MSN Messenger. Thus Microsoft will suffer damages (diminishing advertising income). Similar damages will not occur by the use of the domains against which Microsoft does not act. Therefore Microsoft has a valid reason to act against msnlock.

Microsoft's claims are awarded subsequently with only slight technical deviations.

As far as the costs of the proceedings are concerned the Presiding Judge finds no room for an exception based on fairness and proportion. The fact that Unicaresoft immediately cancelled the msnlock trade mark registration and has not used the challenged domains is found to be irrelevant. The Presiding Judge concludes as follows: 'Unicaresoft has refused to renounce the domains till the day of the hearing. Till the day of the hearing she has called for attention in the media, not only to portrait herself as a mother that stands up against Goliath in the interest of the children, but also to make it very clear that she was not willing to stop the infringement. Thus Microsoft has not started these summary proceedings rashly and did she not persevere in these proceedings wrongly. Microsoft's explanation that she needed to invest more hours in this case because of the media attention is plausible. The Presiding Judge finds no reason to regard the cost statement as not reasonable or disproportionate. Weak financial capacity and the extent of blame are no circumstances that can lead to a moderation of the cost of the proceedings. By the way: Unicaresoft can not be identified with a mother of children but is a commercial software business. Unicaresoft shall therefore be ordered to pay the cost of the proceedings as claimed by Microsoft.'

Microsoft's timelock in these proceedings stopped at € 18,135.

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