Key takeaways

• Green trademarks, when registered correctly, help promote sustainability in products, services, and business practices.
• It is important for brands to find a trademark that is distinctive and unique, and conveys the green message in a manner that steers clear of "greenwashing" brought about by overambitious claims.
• Brands should have robust evidence in place to support their sustainability claims and credentials.

In depth

To overcome the existential threat of climate change while achieving economic growth, the European Commission launched the European Union (EU) Green Deal in December 2019, championing a vision for Europe to become the world's first climate-neutral continent by 2050. To achieve the goals of the EU Green Deal, intellectual property rights, alongside financial capital, are critical. While various types of IP exist that protect green technologies, the focus of this session is around trademarks, the ways by which companies can protect green services and products, as well as the risks associated with "greenwashing" (misleading sustainability claims made by companies). In particular, trademarks are helpful in conveying and highlighting the sustainability of products, and therefore help consumers make more informed decisions about the green claims of brands.

In recent years, the devastating impacts of climate change have become pressing issues that can no longer be ignored by businesses. A recent EU Intellectual Property Office (IPO) study reveals that filings of "green" trademarks in the region have increased significantly over the past years. Across Asia, we are seeing a trend of protecting green technologies, i.e., environmentally sound technologies that protect the environment.

What is a green trademark?

A "green trademark" or "green branding" refers to the practice of conveying or attributing the environmental friendliness of a product or service through the use of trademarks. Green trademarks may be protected as an individual mark (guarantees a specific commercial origin), a collective mark (indicates that a product originates from a particular association, which owns the mark), or a certification mark (indicates the existence of an accepted product standard or regulation and a guarantee of verified compliance with those standards or regulations).

What are the main issues in the registration of green trademarks?

There are two main obstacles in registering green trademarks: (1) lack of distinctiveness, and (2) deceptiveness. The challenge for brands is to find a mark which, on the one hand conveys the "green message," yet at the same time is distinctive and unique. Deceptiveness, which refers to the submission of false and unqualified claims that are incapable of being substantiated, may pose an obstacle not only for registration, but also for use.

How much of a risk is greenwashing?

Greenwashing— which is the practice of using false, misleading, or unsubstantiated claims about the environmental friendliness of products, services, or practices— may pose legal consequences. In Hong Kong, for example, greenwashing presents a risk under the Trade Mark Descriptions Ordinance (TDO). Under the TDO, trade descriptions must be clear, intelligible, unambiguous, timely and most importantly, capable of being substantiated. As such, green claims that are incapable of being corroborated will not only cause reputational damage to the company, but will result to potential liabilities under the TDO.

What trends are we seeing in the EU and in Asia Pacific?

In the EU, case law is ripe with examples of generic green trademark applications, including slogans, which have been refused registration. In the context of the EU Green Deal, generic and vague environmental claims that cannot be substantiated will not give grounds for trademark protection. Examples of such generic environmental claims are "environmentally friendly," "eco" or "green," which wrongly suggest or create the impression of excellent environmental performance. In Hong Kong, examples of green descriptive marks that have been refused registration include GREEN POWER, GREENCYCLE, PURE GREEN, AND ECOGREEN, among others. In Hong Kong and Singapore, the mark AND WE GO GREEN was denied registration as it was allegedly devoid of any distinctive character. In Asia, in addition to the standard due diligence, brands should expect and be prepared for more in-depth sustainability reviews by regulatory authorities. Brands should be ready to provide clear and detailed information about their processes, products and their entire supply chain.

For more practical legal insights on key issues affecting consumer goods and retail businesses in incorporating green innovation practices into their operations and strategies, tune into the Baker McKenzie Off the Shelf video chat series.

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