Green brands: what can be trade marked?

The number of applications for "green" trade marks – marks that expressly or impliedly contain some sort of green claim - has increased in recent years. The UK's Advertising Standards Authority has power to ban adverts containing misleading green claims, but how do the UK and EU IP Offices view applications for green trade marks? 

What's the issue?

• As the climate crisis comes to a head, consumers look for ways to buy more sustainably. Businesses satisfy this demand by offering more “green" products and services, marketed by “green” claims. These claims typically feature on items such as product packaging, brochures, point of sale material and in adverts. However, green claims can also appear within brands. 
• An EUIPO study from September 2021 showed a large increase in the number of applications for trade marks covering green goods and services. In 2020,16,000 such trade marks were applied for at the EUIPO, approximately 14% of all EUIPO trade mark applications. Likewise, the number of applications for marks communicating green credentials is on the rise. 
• In the UK, the Advertising Standards Authority (ASA) will ban adverts that contain green claims that are misleading (see our article here). This could include banning an advert that features a green trade mark, if the claim within the mark is misleading. But how do IP Offices view applications for green trade marks?
• Here, we consider the potential grounds on which a green trade mark application may be refused registration (or invalidated once registered) by the UK and EU IP Offices.

What are green brands?

Even though there is no legal definition of green brands, there are several ways to try to delineate the term. According to the EUIPO, "a green trademark is a collective term for specific trademarks, service marks, and certification marks that communicate environmentally friendly products, services, or practices". In short, all brands that suggest any kind of environmental or sustainability features through words, graphics, symbols, or merely green colouring are potentially green brands. 

Green brands tend to come in two forms. They can be either:

• Product-/service-related. These entail information on specific environmental or sustainability characteristics of individual products or services or product or service categories. 
• Business-related. These relate to information on special environmental or sustainability characteristics and measures of the business itself and/or special commitments of the business to environmental/sustainability causes or measures.

What are the potential grounds for refusing a green trade mark application?

The most likely grounds for a green trade mark to be refused registration (or invalidated once registered) are that:

• The mark is devoid of any distinctive character (section 3(1)(b) of the UK Trade Marks Act 1994 and Article 7(1)(b) of the EUTM Regulation) – "lack of distinctiveness".
• The mark consists exclusively of a sign that designates the characteristics of the goods or services in question (section 3(1)(c) of the UK Trade Marks Act 1994 and Article 7(1)(c) of the EUTM Regulation) – "descriptiveness".

It is also possible for a trade mark to be refused registration (or invalidated once registered) on the ground that it is of such a nature as to deceive the public (section 3(3)(b) of the UK Trade Marks Act 1994 and Article 7(1)(g) of the EUTM Regulation). We consider this first below because, although it seems like an obvious ground for refusal, it is rarely raised for green trade marks in practice.

Deceptiveness

Marks that are of such a nature as to deceive the public will be refused registration (and can be invalidated once registered). Since deception is stated to be as to such matters as "the nature, quality or geographical origin of the goods or service", it is easy to see how green trade marks might fall foul of this provision. 

However, only one green trade mark appears to have been refused or invalidated on this ground so far by the EUIPO; and none by the UKIPO. This is because the threshold for deceit is high. In particular:

• There must be actual deceit or a sufficiently serious risk of deceit. A mere theoretical possibility that the average consumer might be misled is not sufficient for an objection.
• The average consumer is not deemed to be particularly vulnerable to deception.
• The UKIPO and EUIPO will not assume an intention to deceive. Rather, they will assume non-deceptive use, where conceivable and possible. 
• Unlike the ASA, the UKIPO and EUIPO will not investigate how the particular applicant is or intends to use the mark in question; it will assume notional and fair use across the specification. 
• Deception is usually only found where a mark suggests that the goods or services in question possess certain characteristics, which they do not eg the mark contains the words ANIMAL FREE but the specification includes animal products. (Note, however, that the mark APPLE is not deceptive for computers since the average consumer would not expect computers to contain apples. Likewise, a mark containing the image of a chicken would not be refused for poultry in general since non-deceptive use is possible.)
• The assessment of whether a mark is deceptive is made at the filing or priority date of the application and so cannot be remedied by subsequent corrective statements.

The only green mark refused on this ground identified by the authors is an EUTM application for PAPER 2 PAPER RECYCLABLE (logo) for plastic cups and other items (see below). In coming to the view that the mark is deceptive, the Examination Division commented that, "Environmentally conscious English-speaking consumers will think that he is buying a product that is environmentally friendly, whereas in reality he is buying a product that is much more harmful to the environment than paper, namely a product made of plastic or containing plastic, a material that is well known to be harmful to the environment, in particular to the oceans... Moreover, the English-speaking consumers so deceived would recycle the objected products in the erroneous belief that they can throw them into the paper recycling bins, whereas this would be wrong, as these are products made of or containing plastic, with potential pernicious consequences for the recycling process and, ultimately, for the environment." 

The reasoning is clear: the mark implies that the products to which the mark will be applied are made from recycled paper and/or can themselves be recycled as paper, when they cannot.

Other examples (although not strictly green marks) falling fouling of this provision at the UKIPO and/or EUIPO include ALTERNATIVE DAIRY COMPANY CO. 100% ANIMAL FREE (logo) (refused for dairy products), new meat (logo) (refused for non-meat products), VEGITALIAN (refused for meat products), THE PERFECT SUGAR ALTERNATIVE (refused for various sugar products) and the tobaccofree solution (refused for various tobacco products). Again, all these applications were refused because the marks suggest that the goods applied for possess certain characteristics, which they do not.   

To date, no trade mark applications appear to have been refused for deceptiveness on the basis that they contain obviously incorrect or misleading green claims, other than in the circumstances described above. Therefore, a trade mark application containing words such as ELECTRIC HEATERS SAVE YOU MONEY (for electric heaters) or THE GREENEST ENERGY COMPANY (for energy services) would not seem to fall foul of the deceptiveness provisions under current UKIPO and EUIPO practice. This is despite the fact that the first statement is unlikely to be true across the board and the second is unsubstantiated. It seems likely that the UKIPO and EUIPO would assume that non-deceptive use of these marks is possible or even that consumers would see these statements as mere advertising puff. Alternatively, they might simply be of the view that an assessment of this type of "deceptiveness" is not within their remit.

What is less clear is whether a trade mark application containing words such as ZERO EMISSIONS FLIGHTS (for air travel) would be objected to for deceptiveness, it being highly improbable that such flights are currently possible. Arguably, such a mark suggests that the services in question (air transport) possess certain characteristics that they do not (that they are emission free). However, the argument is not as straight-forward as for the PAPER 2 PAPER RECYCLABLE mark discussed above. Again, it seems unlikely (although not impossible) that the UKIPO and EUIPO would raise a deceptiveness objection here. More likely, they would consider the "policing" of such claims to be within the remit of organisations such as the ASA in the UK (see the recent ETHICA DIAMONDS UKIPO invalidity decision which touches on the remit of the ASA compared to the UKIPO).

At present then, it seems unlikely that a green trade mark application will be refused by the UKIPO or EUIPO on the basis that it is deceptive except where the mark suggests that the goods or services in question possess a certain characteristic which they clearly do not. How far this concept will be stretched remains to be seen. Nonetheless, it should be remembered that, if a green trade mark features in advertising in the UK, it will come within the ASA's remit (see our article on the ASA's remit here). In these circumstances, it should be considered whether the mark might fall foul of the ASA's rules on misleading green claims, as well as the likelihood of any deceptiveness objection. 

Lack of distinctiveness / descriptiveness

The most common ground on which green trade marks are refused registration (or invalidated once registered) is that they lack distinctiveness or are descriptive. There are numerous examples of green marks falling foul of these provisions at the UKIPO and EUIPO. 

Commonly used words like eco, green and bio will be refused on these grounds if simply combined with other descriptive or non-distinctive words or logos. Likewise, commonly used logos or symbols – such as the recycling arrows or green leaves – will not be sufficient on their own to confer distinctiveness. 

Examples of UK trade marks refused under these grounds include GO GREEN (clothing), green tec (mobile phones etc), LIVE GREEN (beauty products), Green Skies and logo (travel etc), Eco UK Trading and logo (beauty products etc), Eco Bib (baby bibs) and eico warrior (clothing).

Examples of EUTMs refused registration under these grounds include: EcoPerfect (household and kitchen utensils and items etc), EcoDoor (dishwashers, washing machines etc), ECO INNOVATION (advertising to promote sustainability etc), Greenworld (gas fuels, retail of fuel etc), carbon green (reclaimed rubber), 100% green veg bag (and logo) (paper items etc), Greenline (fertilisers, pesticides etc), SAVE OUR EARTH NOW (cleaning preparations, furniture, clothing etc), INVESTING FOR A NEW WORLD (market research, invetsment management etc), and THE FUTURE IS PLANT-BASED (food supplements, confectionary type products etc). 

Two recent decisions give an insight into the EU General Courts thinking on these types of mark. In a recent decision, the EU General Court refused an application to register the mark “BioMarkt” (logo), for various goods, in particular body care products, food supplements, foodstuffs and beverages, as well as various services in classes 35 and 43 (see below). The application was only accepted for a small number of services in classes 35 and 42. This was even though the applicant already had a registration for a “BioMarkt” word and figurative mark. In holding that the mark was descriptive, the court said that:

• “BioMarkt" is not an indication of commercial origin. It serves only as a description of a sales outlet in which organic products are offered.
• The argument that the mark consists of an unusual word combination fails since the mark is merely a juxtaposition of two descriptive terms with no distinct overall impression. Furthermore, the fact that the mark is not lexically verifiable is irrelevant. 
• The graphic elements are not sufficient to overcome the overall descriptiveness of the words. They would have to distract the relevant public from the descriptive message conveyed by the word element, otherwise, the mark remains descriptive.
• There is a need to keep the mark free for other traders to use within the meaning of Article 7(1)(c) of the EUTM Regulation.

The EU General Court also recently refused an application for the mark Sustainability through Quality for all goods and services applied for (including engines, electrical and electronic apparatus, printed matter, and scientific and technological services), this time for lack of distinctiveness. The court held as follows:

• The general rule applies - slogans are, in principle, eligible for protection if they would be seen by the average consumer as an indication of commercial origin. They are not protectable if they would be perceived as a mere advertising slogan. Originality can come in the form of an unusual structure (such as wittiness or unusual alliteration or the like) or if an effort of interpretation is required.
• None of these requirements were fulfilled in this case. The mark communicates in an immediately understandable way that sustainability is achieved through a quality product or service, a statement in the spirit of the times. The mark consists purely of a promotional and laudatory message expressing an abstract corporate philosophy.
• The mark had no distinctive character within the meaning of Article 7(1)(b) of the EUTM Regulation. 

The decisions show that green brands must be creative if they want to meet the distinctiveness threshold. To achieve registration, applicants should consider: 

• Adding a distinctive word element to their mark or combining it with their house mark.
• Getting creative eg using wordplay or alliteration or ensuring the mark is more than the sum of its parts. 
• Adding a distinctive logo or figurative element to their mark.
• Alluding to their green credentials eg by creating a new word or neologism that is suggestive rather than descriptive. The freecycle mark is often given as an example of this type of mark (registered for recycling services).

While there is nothing new here, applicants can expect the UKIPO and EUIPO to be particularly alive to green trade mark applications. Even though it was not directly said, both the above decisions made by the EU General Court align with a trend of prohibiting “greenwashing”. 

How do certification marks fit in?

For those wishing to showcase their environmental credentials, they should consider applying to use a certification mark. These can be registered at both UK and EU level. They provide a guarantee that the goods or services bearing the mark meet a certain defined standard or possess a particular characteristic. Such marks are usually registered in the name of trade associations, government departments, technical institutes or similar bodies (but can be registered by any entity with legal personality), who will define the standards or characteristics in question. Anyone can apply to use these marks – permission should be given if the applicant meets the certified criteria. 

Examples of "green" certification marks include the fairtrade logo, the VEGAN mark and the B-Corp Certification.

What does this mean for you? 

Careful thought should be given before applying to register or use green brands. Applications will need to meet the distinctiveness threshold and specifications should be drafted carefully to ensure no deceptiveness objection is raised. More generally, consideration should be given as to how and where the mark might be used and whether such use comes within the remit of the ASA (or otherwise falls foul of advertising or consumer protection laws and rules).