25 April 2023
Brands Update - April 2023 – 1 of 5 Insights
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?
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:
The most likely grounds for a green trade mark to be refused registration (or invalidated once registered) are that:
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.
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:
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.
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:
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 decisions show that green brands must be creative if they want to meet the distinctiveness threshold. To achieve registration, applicants should consider:
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”.
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.
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).
25 April 2023
25 April 2023
by Simon Jupp
25 April 2023
by Multiple authors