Latest developments in EU green trademarks (Part II)

In Part I (here) we shared thoughts about the phenomenon of green branding in the EU as well as the consolidation of the interpretation by the General Court (GC) of deceptiveness to combat green washing. In this second part, we look into other grounds for refusal or invalidity of green claims in trademarks, namely, descriptiveness and lack of distinctiveness, and at the big potential of EU certification marks.

Reject EU trademarks applications of descriptive green claims

As noted by several legal scholars, assessing whether a green claim is deceptive at the time of registration can be difficult due to the limited information about its actual or potential use in the market (see Spedicato and Carvalho). Nevertheless, reflecting on the examination of green EU trademarks remains a meaningful exercise: case law at both EUIPO and GC level reveal useful guidance on the role of descriptiveness and lack of distinctive character in assessing green EU trademarks applications.

What has acquired particular relevance through the case law is the GC’s sensitivity towards consumers’ perception of green claims as something empirical. In the ecoDoor case (T-625/11), the GC confirmed that some green signs, such as the word “eco”, serve the need to designate characteristics of goods or services that may be and shall, due to their descriptive nature, remain free to be used by all (see para 14). In the Sustainability through quality case (T-253/22), the GC emphasized that environmental claims that lack distinctive character cannot be protected as EU trademarks precisely because the relevant public perceives them as mere indications of a particular (environmental) quality of the product or service.

The EUIPO appears to have partially internalized this differentiation between distinctive green signs and descriptive green claims although its practice is less than consistent: on the one side, it rejected green claims such as “locally grown sustainable”, “re-use”, “upcycling”, “green cotton”; on the other, it granted protection to straight-to-the point green claims, such as slogans like “This is where sustainability begins”, “Made in Sustainability”, “solid about sustainability”, “We empower sustainable progress”. Similarly to what was stated in Part I (here) regarding deceptiveness, validly registered EU trademarks, especially after unfair competition lawsuits or scrutiny by consumer protection authorities, may be subject to invalidity proceedings also on the ground of descriptiveness or lack of distinctive character or both.

Tapping the potential of EU certification marks

Lastly, a glimpse into the foreseeable future. EU certification marks seem a very promising way ahead to promote environmental protection and sustainable economy by way of EU trademark law. Indeed, EU unfair competition law, in particular in its Empowering Consumers Directive, expressly endorses certification schemes, emphasizing their capacity to enhance clarity and reliability through continuous and independent verification systems. Moreover, the Directive provides that, in the context of green branding, displaying a green claim or sustainability label that is neither based on a certification scheme nor established by public authorities may qualify as an unfair commercial practice.

Difficulties arise from the current state of the EU trademarks register, which displays validly registered EU trademarks that are not (or not yet) certification marks, such as International Green & Sustainable Certification, Purposely certified sustainable e-commerce, Krav Sustainability Label, Carbon Neutral Certified. From the standpoint of consumer protection and market transparency, the existence of such registrations as individual EU trademarks might be problematic. These signs are not necessarily linked to independent or verifiable standards, yet they are used, often at the discretion of their owners and licensees, to communicate the environmental quality of products and services. As noted by several legal scholars (see Lai/Johnston/Williams), this practice is, at best, suboptimal and, at worst, liable to mislead consumers and distort competition.

A broader use of EU certification marks might be a viable solution. These are sufficiently flexible to be able to distinguish products and services and, at the same time, sufficiently structured to reliably establish benchmarks for green branding. In doing so, they fundamentally contribute to a better finetuning of EU trademark law and the EU’s normative priority to protect the environment, promote a sustainable economy, and support truthful and evidence-based green branding.