Use of LINDOWS mark in small print is legitimate

Netherlands

In Microsoft Corporation v Lindows.com Inc (KG 04/930, May 27 2004), the District Court of Amsterdam has ruled that the limited use by the defendant of the LINDOWS mark on its website and in manuals neither (i) constitutes trademark infringement, nor (ii) breaches a January ruling ordering it to cease using the mark in Benelux.

Microsoft brought lawsuits in various countries against Lindows.com, which sells a computer operating system that runs under both Linux and Windows software, alleging infringement of its famous WINDOWS mark.

In January, the District Court of Amsterdam ruled, in summary proceedings, that the use of the trademarks LINDOWS, LINDOWS.COM and LINDOWSOS infringed Microsoft's rights in the WINDOWS trademark. The court ordered Lindows to cease using the mark in Benelux and to change its name for its Benelux operations (see Microsoft cracks down on Lindows in Benelux). Lindows subsequently changed its name to Lin---s.com and later to Linspire for its operations outside the United States. However, it carried on using the LINDOWS mark in small print on its website (available in Benelux) and in its manuals distributed worldwide. Microsoft filed a new suit with the District Court of Amsterdam alleging breach of the summary proceedings order.

The court rejected Microsoft's claims. It found that Lindows has a relevant interest in using its trademark and trade name on its website since Lindows is still its trade name in the United States. The court also found that Lindows (i) only appears inside the manuals (the packaging merely bears the LINSPIRE trademark), and (ii) is contained in legal texts and disclaimers (eg, "LINSPIRE is a trademark of Lindows Inc, a US corporation" and "copyright 2004 Lindows Inc") that are always combined with the text: "Lindows Inc [is] not endorsed by or affiliated with Microsoft … in any way".

Further, the court held that not every use of the LINDOWS trademark and trade name infringes the WINDOWS mark - in particular, use in small print is not infringing. In such circumstances, the use:

  • does not provide Lindows with a dishonest advantage;

  • is not detrimental to the distinctive power or the reputation of the WINDOWS trademark; and

  • is in no way tortious.

The court gave due consideration to the fact that the January ruling allowed Lindows to use its trademark and trade name outside Benelux. It found that allowing Microsoft's claim would force Lindows to change its name worldwide, thus exceeding the court's jurisdiction.

This decision seems to indicate that small infringements may be deemed acceptable by Dutch courts, which, if it is confirmed, will create much uncertainty among trademark owners.

In related news, Microsoft announced last week that it had agreed to pay Lindows $20 million to settle all LINDOWS trademark suits.

Carja Mastenbroek and Alexander Verbeek, Steinhauser Hoogenraad Advocaten, Amsterdam

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