The challenges of green branding

Environmental Social Governance (« ESG ») has become a key concern for more and more companies, leading to changes to their corporate policies as well as to their goods or services. This concern together with the rapid increase in demand from consumers for “environmentally friendly” products and services has led companies to invest significant time and money to offer more sustainable goods and services. Such investment goes hand in hand with efforts to change the image that the company projects on the market.

In such context, brand strategies, and in particular trade mark registration, constitute an essential tool in global governance accounts. This is because besides their main function, which is to indicate commercial origin, trademarks have other functions, including a communicative function. A trade mark can indeed be used to provide the public with information about the goods or services which it designates and evoke some specific impressions about the goods or services for which it is intended.

The quest for greater sustainability has thus naturally led to an increase in the number of green brand registrations and green claims in advertising. An EUIPO study from September 2021 (updated in 2023) shows a large and steady increase in the number of applications for trademarks covering green goods and services.

Obviously not everything is permitted. It is therefore important to understand the legal framework for green trade marks in order to define a successful branding strategy.

What is a green trademark ?

There is no legal definition of a green trademark. There are however several ways 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, this term encompasses all trademarks that suggest any kind of environmental or sustainability features through words, graphics, symbols, or merely green colouring.

Green trademarks 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.
  
  

Obstacles for registering green trademarks

Green trademarks are by definition, at least, partly descriptive as their purpose is to “communicate environmentally friendly products, services, or practices”.

To communicate such message, one must add to its trade mark references to environmentally friendly characteristics, for example in relation to word marks, by adding a prefix or suffix such as “Bio”, “Green”, “Eco”, “Pure”, etc. This may raise several issues in relation to the eligibility of the sign for registration as a trademark.

First, using  misleading, unclear, or poorly-substantiated environmental claims may be considered as an unfair commercial practice which prevent consumers from making sustainable consumption choices. Before filing for registration for a green trade mark, companies must make sure that they are able to show that the characteristics they are claiming through their trade mark can be substantiated. However, signs such as word marks or logos are by essence quite broad. It will be difficult to comply with the requirement to be sufficiently clear. The EU legal framework will likely become even stricter in this regard with the adoption of the proposed directive on substantiation and communication of explicit environmental claims[1], which requires companies to substantiate the claims that they make about environmental aspects or performance of their products and organisations using robust, science based and verifiable methods.

Another hurdle potentially faced by applicants is that, in the event that the green claims are honest and well-founded, the trade mark could then be found descriptive.

In a decision of 29 April 2010, the General of the European Union (“GC”) confirmed the refusal of an application for registration of the word mark ‘biopietra’ for bricks or building because of the lack of distinctive character of the mark applied for, based on the assumption that the term ‘biopietra’ would be perceived as descriptive of stones quarried in an ecologically sound manner.[2]

Similarly, in a decision of 15 January 2013, the GC confirmed that the word mark ecoDoor for household and heating appliances and automatic beverage or food dispensers, should be refused for registration on the basis that it was descriptive, since the element ‘eco’ would be immediately understood by the relevant public to mean ‘ecological door’.[3]

In this last case, the General Court noted that consumers are increasingly paying attention to the ecological quality of goods, including their energy consumption, and to environmentally friendly production processes. This applies in particular to the goods in question, as they consume energy in particular. The ecological character thus constitutes an essential characteristic of these goods. Consequently, in the perception of the relevant public, the trade mark applied for describes an essential characteristic of the goods in question, namely their ecological character, because it describes the ecological qualities of the door with which those goods are equipped.

More recently, in decision of 1 February 2023, the General Court upheld the refusal of the word mark "Sustainability through Quality" for motors and related goods and services. The Court found that the phrase 'Sustainability through Quality' was not unusual in form and did not contain any surprising, fanciful or unexpected element capable of triggering a cognitive process or otherwise conferring distinctiveness on it. It was therefore held that the sign was a simple promotional message, casting a positive light on the goods and services covered by the application, and not an indication of commercial origin.[4]

It follows that green trademarks can be difficult to register as they may be considered misleading or even simply descriptive or non-distinctive.

Green credentials with a certification mark

Given the difficulties in registering green trademarks, EU certification marks can be a useful and preferred tool to reflect sustainable choices in building a green branding strategy.

EU certification marks distinguish goods or services that have been certified by the owner of the mark as to material, method of production, quality, accuracy or other characteristics, other than geographical origin, from goods and services that have not been so certified. Unlike individual trademarks, certification marks are not subject to the requirement of distinctiveness.

It indicates that the goods and services bearing the mark conform to a certain standard, which is set out in the rules of use and controlled under the responsibility of the owner of the certification mark, irrespective of the identity of the company that actually produces or supplies the goods and services in question and actually uses the certification mark.

It may therefore be of interest for companies implementing sustainable production processes or otherwise active in "green" sectors to investigate whether their goods and services could be certified by an existing certification body. This would allow them to use recognised EU certification marks in trade.