International: Off the Shelf Video Podcast – How trademarks can promote green innovation (Podcast)

In brief

Consumers are becoming increasingly discerning when it comes to the eco-credentials of brands they support and are becoming more and more attracted to brands that have a green image. Against this backdrop, the Baker McKenzie Consumer Goods & Retail industry group has produced the "CG&R and Sustainability Video Chat Series" in which experts provide short, practical insights into some of the legal considerations that companies need to keep in mind when undertaking green innovation.

In the fifth episode of the series, partner Eva-Maria Strobel and senior associate Tiffany Conley from our IP and data and technology practice discuss green trademarks in green innovation, the options for protection, and the challenges of green trademarks registration. They examine the issues surrounding the revocation of registered trademarks, and highlight the trends and developments from both a European and Asia Pacific lens.


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.

Related podcasts

International: Off the Shelf Video Podcast - Sustainability and Green Innovation (Podcast)

International: Off the Shelf Video Podcast - Advertising around green and sustainability claims (Podcast)

International: Off the Shelf Video Podcast - The role of patents, plant variety rights and trade secrets in green innovation (Podcast)

International: Off the Shelf Video Podcast - The role of collaboration in green innovation (Podcast)

International: Off the Shelf Video Podcast – How trademarks can promote green innovation (Podcast)

International: Off the Shelf Video Podcast – Artificial Intelligence as an enabler of green innovation (Podcast)

Contact Information

Copyright © 2024 Baker & McKenzie. All rights reserved. Ownership: This documentation and content (Content) is a proprietary resource owned exclusively by Baker McKenzie (meaning Baker & McKenzie International and its member firms). The Content is protected under international copyright conventions. Use of this Content does not of itself create a contractual relationship, nor any attorney/client relationship, between Baker McKenzie and any person. Non-reliance and exclusion: All Content is for informational purposes only and may not reflect the most current legal and regulatory developments. All summaries of the laws, regulations and practice are subject to change. The Content is not offered as legal or professional advice for any specific matter. It is not intended to be a substitute for reference to (and compliance with) the detailed provisions of applicable laws, rules, regulations or forms. Legal advice should always be sought before taking any action or refraining from taking any action based on any Content. Baker McKenzie and the editors and the contributing authors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The Content may contain links to external websites and external websites may link to the Content. Baker McKenzie is not responsible for the content or operation of any such external sites and disclaims all liability, howsoever occurring, in respect of the content or operation of any such external websites. Attorney Advertising: This Content may qualify as “Attorney Advertising” requiring notice in some jurisdictions. To the extent that this Content may qualify as Attorney Advertising, PRIOR RESULTS DO NOT GUARANTEE A SIMILAR OUTCOME. Reproduction: Reproduction of reasonable portions of the Content is permitted provided that (i) such reproductions are made available free of charge and for non-commercial purposes, (ii) such reproductions are properly attributed to Baker McKenzie, (iii) the portion of the Content being reproduced is not altered or made available in a manner that modifies the Content or presents the Content being reproduced in a false light and (iv) notice is made to the disclaimers included on the Content. The permission to re-copy does not allow for incorporation of any substantial portion of the Content in any work or publication, whether in hard copy, electronic or any other form or for commercial purposes.