As global awareness of environmental sustainability intensifies, businesses increasingly seek to align their branding with eco-friendly values. However, recent developments in EUIPO & UKIPO decisions indicate a growing regulatory focus on combating greenwashing (misleading claims about a product’s environmental benefits), raising significant hurdles for businesses pursuing “green” trade marks.

Recent EUIPO Decisions

Recently, the EUIPO rejected two green trade mark applications, ESGDATABOARD and ECOFLOW, raising a few concerns. These applications were denied under Article 7(1)(b) of the European Union Trade Mark Regulation (EUTMR) for lacking distinctive character.

The EUIPO argued that ESG (environmental, social, governance) and ECO (ecological) are descriptive terms commonly associated with sustainability, and their combination with other elements like DATABOARD and FLOW did not establish sufficient distinctiveness. This stance arguably departs from previous practices where similar terms were registered, signalling a stricter approach.

The legal framework

Under Article 7(1)(b) EUTMR and Section 3(1)(b) of the UK Trade Marks Act 1994, a trade mark must be distinctive enough to indicate the origin of goods or services. Terms that are purely descriptive or laudatory, are generally not registrable.

The EUIPO has previously held that trade marks comprising terms like ECO or GREEN may fall short of this standard unless they are used in a sufficiently unique or non-descriptive way. For example, ECOPERFECT and ECODOOR were both denied for being descriptive of ecological quality.

The greenwashing challenge

The heightened scrutiny of green trade marks aligns with efforts to combat greenwashing. Regulatory bodies such as the CMA and ASA have penalised brands for false eco-friendly claims, such as misleading recycling capabilities. In trade mark law, applications that mislead the public may be denied or invalidated/revoked following post-registration action.

The EUIPO’s decisions reflect a broader trend of using trade mark law to prevent greenwashing. However, balancing this goal with legitimate business efforts to promote sustainability can be challenging. Whilst the rejection of generic or descriptive marks is justified, the arguable inconsistency in assessing distinctiveness undermines clarity for applicants.

Implications for businesses

Businesses aiming to register green trade marks face several challenges under the current developing regulatory landscape:

• Heightened scrutiny of descriptive terms: Terms like “eco,” “green,” and “sustainable” are likely to be rejected unless used innovatively. Applicants must ensure their marks are distinctive and not merely descriptive of eco-friendly attributes.
• Increased risk of revocation/invalidation: Marks that are misleading or used in a way that suggests false environmental credentials may be subject to post-registration challenges.
• Consumer perception of trends: As consumers become more sophisticated in identifying greenwashing, brands must strike a balance between signalling sustainability and maintaining distinctiveness.

Strategies for overcoming challenges

Businesses could take several steps to navigate these challenges:

• Be creative: Devise unique branding that incorporates green themes without relying on generic terms. For instance, combining less obvious words or creating figurative marks can improve registrability.
• Use certification marks: Use established certification systems to validate green claims while pursuing distinctive branding for trade mark registration.

The recent EUIPO decisions signify a stricter approach to green trade marks, seemingly prioritising the fight against greenwashing while creating challenges for legitimate businesses. Although this aligns with consumer protection and environmental goals, there may be a need for clearer guidelines and consistent practices in assessing the registrability of green marks. Businesses must adapt by embracing innovation in branding and ensuring transparency in their environmental claims, thereby building consumer trust and avoiding legal pitfalls.

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