Dutch courts rule 'INTERMEDIAIR' marks are distinctive

In Intermediair Uitzendbureau BV v VNU Business Publications BV, the Court of Appeals for Arnhem has refused to invalidate various trademarks registered by the defendant that include the word 'intermediair' (meaning intermediary). The court held that although the word is descriptive, VNU's trademarks had become well known and distinctive through use.

VNU publishes business and employment magazines, and is the owner of several registered trademarks incorporating the word 'intermediair', such as INTERMEDIAIR COMPETITION IN EXCELLENCE and INTERMEDIAIR STARTERS. VNU brought a claim for trademark infringement against Intermediair Uitzendbureau (IU), an employment agency specializing in the placement of secretarial staff, for its subsequent registration and use of the trademark INTERMEDIAIR UITZENDBUREAU.

IU counterclaimed for revocation of VNU's marks arguing that 'intermediair' is a common Dutch word for a person involved in the business of providing intermediary services (which would include employment agents). It therefore contended that VNU should not be allowed to monopolize the use of the word in conjunction with goods and services relating to recruitment or employment information.

The trial court held in favour of VNU, rejecting IU's counterclaim. IU then appealed.

The Court of Appeals for Arnhem affirmed the trial court's ruling. It acknowledged the descriptive character of the word 'intermediair', but reasoned that VNU's marks had acquired distinctiveness through use. It noted that well-educated people are likely to be familiar with VNU's marks and their association with the field of employment. Thus, VNU's trademark registrations were held to be valid. The appellate court also upheld VNU's claim for infringement because IU's mark closely resembled those of VNU, which would have lead to customer confusion.

Paul Steinhauser, Steinhauser Hoogenraad Advocaten, Amsterdam