Latest developments in EU green trademarks (Part I)

Consumers’ awareness towards sustainability is steadily increasing (see here and here), showing a big impact on market supply. Firms that previously paid limited attention to it have begun to integrate environmental concerns into their strategies (see for instance Gucci, Pepsi, and TotalEnergies), while companies for which sustainability issues were already central are increasingly emphasizing these commitments as explicit elements of their mission statements and brand identities.

This phenomenon, commonly referred to as green branding, has been accompanied by a parallel rise in greenwashing, namely the strategic practice whereby firms present themselves as environmentally responsible through marketing and communication actions that are not matched by any substantive nor verifiable practices. As a result, consumers and regulators are facing challenges in distinguishing genuine sustainability commitments from opportunistic, untruthful branding strategies.

At first glance, EU trademark law may appear to play a limited role in this context: it does not directly address environmental concerns nor engage with the merits of consumers’ choices. Nevertheless, as this and a prior blogpost (see Charmeil here) illustrate, its potential in finetuning intellectual property legal protection with the fundamental right to environmental protection is very significant.

In this Part I we look at the consolidation of the interpretation by the General Court (GC) on deceptiveness to combat green washing. In Part II we will focus on other grounds for refusal or invalidity of green claims as EU trademarks, namely, descriptiveness and lack of distinctiveness, and at the big potential of EU certification marks.

The persistent problem of greenwashing

Empirical data about greenwashing remain highly worrisome (see here and here). Examples are numerous: recently, several European airlines have been found to use “vague green language and terminology” that proved unsubstantiated; similar practices were identified among major apparel brands H&M and Decathlon, energy suppliers such as TotalEnergies, and tech companies such as Apple, which was ordered to stop advertise its smartwatches as carbon neutral (see here and here).

The EU has taken significant steps toward requiring that environmental claims be communicated in a clear, specific, and substantiated manner (see, among others, the EU Empowering Consumers for the Green Transition Directive and the proposed EU Green Claims Directive). What about EU trademark law?

Invalidate green EU trademarks that prove untruthful

The greenwashing cases mentioned above are particularly evocative, as many of the companies involved successfully registered green EU trademarks that remain valid (see, for instance, Air Baltic’s and KLM’s EU trademarks “Think green Fly green”, “FlyZero”, “Fly Responsibly”; H&M’s “CONSCIOUS”; Apple’s “Carbon Neutral”). In cases where untruthful green EUTMs have been granted, invalidity proceedings may constitute a viable corrective mechanism. Among these, the ground of deceptiveness is particularly relevant, especially in light of the evolving case law.

Besides clearly stating that an EU trademark might be invalidated if its use leads consumers to believe that “the goods and services possess certain characteristics which they do not in fact possess” (General Court (GC), T-107/23 MYBACON, para 30), the GC had several occasions to engage directly with cases of green branding.

In such cases, the Court consistently emphasized that

·         “consumers are increasingly mindful of the ecological quality of goods, including their energy consumption, and of environmentally friendly manufacturing processes” (GC, T-625/11 ecoDoor, para 30);

·         that “a product or service described as green is usually understood to be a product or service that is environmentally friendly or, at least, less harmful to the environment” (GC, T-106/14 Greenworld, para 24);

·         and, most interestingly, that a green EU trademark might be deceptive if the presence of “indications on a (…) product (or service) (…) which give the impression that that product is natural, does not harm health or is environmentally friendly, is of such a nature as to mislead and deceive the consumer” (GC, T-86/19 BIO-INSECT Shocker, para 78). Importantly, the Court emphasized that “the presence of such an indication (…) is sufficient to establish a sufficiently serious risk of deceiving the consumer” (para 79).

Applied to the examples mentioned above, this suggests that currently valid EU trademarks might be invalidated if it was demonstrated that they indicate an environmental-friendly performance that does not correspond to reality. According to BIO-INSECT Shocker, the mere possibility that the trademark could be used in a non-deceptive way does not exclude the ground for invalidity. The main limitation of this corrective mechanism remains procedural: invalidity on the ground of deceptiveness requires an application by an interested party, which would include consumer representatives and consumer protection organizations, and the onus of proof lies on the cancellation applicant.