May 2018. Staffing Groep Nederland, which runs a job placement service for independent IT contractors under the trade name IT-Staffing, scored a satisfying victory on 25 April. Rival firm Staffing IT was ordered to change its name due to infringing the trademark rights of the IT-Staffing device mark.
The case is unusual since you wouldn’t think it was possible to claim trademark rights to a descriptive word like IT-Staffing. After all, the word merely describes the service being offered: i.e. supplying companies with IT staff. It’s not distinctive, so trademark protection wouldn’t appear to be an option.
Fortunately, Staffing Groep Nederland was able to rely on the concept of acquired distinctiveness. This means that a (more or less) non-distinctive word can acquire distinctiveness through long and intensive use combined with frequent advertising. It thus loses its merely descriptive character and consumers start seeing it as a brand. Good examples of trademarks with acquired distinctiveness are EasyJet, de Volkskrant [Dutch newspaper] and Volkswagen. They’re now so familiar that the public has ‘forgotten’ their original, purely descriptive significance.
Examples of trademarks with acquired distinctiveness – de Volkskrant, EasyJet and Volkswagen –whose original, purely descriptive significance has been forgotten by consumers
Evidence from market surveys
During the case, Staffing Groep provided convincing evidence of acquired distinctiveness. Based on market surveys, it showed that the trademark IT-Staffing had acquired distinctiveness due to long and frequent use on Facebook and Twitter combined with extensive advertising campaigns in national dailies, trade magazines and radio commercials. This had invested what had originally been the descriptive word IT-Staffing with strong and convincing trademark rights, and ultimately the ability to prohibit the use of Staffing IT.