Microsoft obtains summary judgment against HOTMAIL infringer

In Microsoft Corporation v E Nov Développement, the Paris Court of First Instance has granted what seems to be the first summary judgment in France based on a Community trademark.

On February 3 2004 Microsoft started summary proceedings against French corporation E Nov Développement seeking a restraining order against E Nov's use of the Community trademark HOTMAIL in the address '[email protected]' for mass emailing. Microsoft registered HOTMAIL as a Community trademark on October 10 1997 for email services. The Hotmail service is accessible in France through the MSN portal.

The Paris Court of First Instance granted Microsoft summary judgment. It ruled that (i) the use of a trademark in an email address for mass emailing (the word 'spam' was not used) amounts to commercial use, and (ii) there was a likelihood that the average consumer would be misled into believing that Microsoft authorized that use. The court rejected E Nov's claim that the mark HOTMAIL lacks distinctiveness. It held that (i) the choice of combining the words 'hot' and 'mail' was arbitrary, which rendered the mark distinctive, and (ii) pursuant to Article 95 of the Community Trademark Regulation, a trademark is considered valid unless that validity is disputed in a counterclaim filed with regards to the main proceedings, which was not the case here.

The court considered that the case looked sufficiently serious on the merits to grant a decision in summary proceedings. Taking into account the fact that E Nov had stopped using HOTMAIL in its email address, the court prohibited E Nov from further use during the length of the proceedings on the merits under a penalty of €100 per noted infringement, starting one month from the notification of the order.

It is worth noting that under French law and practice a defendant may sometimes be deprived of the possibility of filing an invalidity counterclaim in the main proceedings before the hearing on the summary proceedings is held. If this practice is confirmed, it will be very difficult for defendants to use the invalidity defence in the French courts.

Richard Milchior, Milchior-Smilevitch, Paris