Maria Miguel Carvalho (Associate Professor with Habilitation, School of Law, University of Minho, Portugal. Director of Research Centre for Justice and Governance, School of Law, University of Minho, Portugal)
 

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Introduction*

The importance of intellectual property [IP] in the pursuit of goal 9 of the 2030 Agenda (build resilient infrastructure, promote inclusive and sustainable industrialization and foster innovation) is often mentioned and, upon the initiative of the World Intellectual Property Organization [WIPO], was already the leitmotif of the World IP Day in 2020 (“Innovate for a Green Future”)[1], although for the most part only patents and utility models are mentioned. However, due to a growing awareness on the part of consumers [the “green” consumers (LOHAS consumers)][2] on the impact of their choices, in recent years the role that trade marks might play in this domain is also emerging[3] (e.g., the 2022 MARQUES Annual Conference theme: “Celebrating marks: How sustainability and technology will shape the future of brands”).

Trade marks are distinctive signs of products or services that provide relevant information to consumers. They can therefore play a highly relevant role concerning, in particular, the increased choice of products or services distinguished with “green” signs, and thus also encourage companies to adopt (more) sustainable practices. Companies, aware of this fact, have been increasingly adopting the so-called green branding, which consists in using trade marks that suggest that the products or services they indicate are environment-friendly (green marks, eco marks), for example, because they are recyclable.

This phenomenon, which some consider to point out an era of “eco-marks”,[4] has recently triggered the first study promoted by the European Union Intellectual Property Office [EUIPO],[5] which is the authority for trade mark registration in the European Union. This study – Green EU Trade Marks Report –, which aimed to assess, considering the registration applications filed since the (then) Office for Harmonization in the Internal Market (that preceded the EUIPO) started operating in 1996 and until 2020, if the description of the goods or services for which the registration of “green signs” (such as, for example, “photovoltaic”, “solar heating”, “wind energy”, “recycling”) was applied for as a trade mark reflects aspects related to environmental protection and sustainability, a hypothesis that was confirmed.[6]

From a different perspective, it should be stressed that, in fact, the use of green branding often ends up in “greenwashing”, that is, taking advantage of these signs to make consumers think that the products or services they distinguish are more “environment-friendly” than they actually are. Perhaps this is why the European Commission and national consumer protection authorities have focused for the first time on “greenwashing” in their annual sweep to identify breaches of EU consumer protection laws in online markets.[7]

The line between green branding and greenwashing may be blurred or even non-existent, but it is also true that the latter may in fact constitute an unfair commercial practice (e.g., misleading)[8] or cause the infringement of rules on trade marks set out in the Industrial Property Code [IPC][9] and/or the European Union Trade mark Regulation [EUTMR].[10] We will briefly reflect on how the European Trade Mark Law may encourage the adoption of sustainable practices through the legal regime of guarantee or certification marks or through the application of some rules aimed at avoiding the susceptibility of consumers to be misled.

1. The legal regime of the guarantee or certification trade marks

The certification or guarantee trade mark, besides distinguishing the products or services by reference to the business origin, aims mainly to attest that a certain product or service has been subject to control and/or complies with the standards set by the trade mark owner in the regulations of use regarding the material, manufacturing method of the products or the supply of services, quality, precision or other characteristics. They therefore perform a quality assurance function, and are especially relevant with respect to “green” trade marks we are referring to.

Against this background, it should be noted, in particular, that since the owner of the trade mark cannot engage in a business activity involving the supply of certified goods or services, there is a “permanent, institutional separation”[11] between the person holding the trade mark and those using it.[12] On the other hand, the regulations of use, in addition to indicating the persons who are entitled to use the trade mark, as well as the conditions under which the trade mark must be used and the applicable sanctions and the rights and obligations of the interested parties in the event of infringement, must also refer to the plan to control the use of the trade mark (Articles 217, no. 1 CPI and 84, no. 2 EUTMR). This plan must reflect the characteristics to be certified by the trade mark and the manner in which the certification body verifies those characteristics and supervises the use of the trade mark, and if the owner of the trade mark fails to take reasonable measures to prevent the use of the trade mark which is incompatible with the conditions provided for in the respective regulations of use, the registration will be revoked (Articles 219, no. 2, paragraph a) CPI and 91 EUTMR)[13].

Hence, a priori, it will (also) be in the interest of the owner of the trade mark to control properly the use of the trade mark by users, as well as to respond appropriately in the event of infringements of that trade mark, whether by users or by unauthorised persons. Either way, this provision encourages the correct use of the signs.

2. Prohibition of registration of deceptive trade marks

The deceptiveness of the sign intended to be registered as a trade mark when the application for registration is filed (original deceptiveness) constitutes an absolute bar to its registration [(Articles 231, no. 3, paragraph d) CPI and 7, no. 1, paragraph g) EUTMR)] and, if granted, grounds for its invalidity [Articles 259, no. 1 CPI and 59, no. 1, paragraph a) EUTMR)]. This prohibition applies both to guarantee or certification marks[14] and to individual marks, to which we shall now refer.

The assessment of the misleading character of a trade mark is carried out by determining its meaning and taking into account the goods or services which the sign intends to indicate. Therefore, the relevant deceptiveness is that which results from the sign itself, from its meaning and not from its use (inherent deceptiveness). However, since the application for registration only has to indicate the goods or services for which the mark is intended, in accordance with the classes of the international classification of goods and services designated in precise terms and that, as a rule, “a mere list of goods or services, without any explanation of their characteristics, does not allow (…) the assessment of the misleading character of the trade mark”[15], one may discuss the effectiveness of the system in place and the means available to the offices responsible for trade mark registration to determine, right at the time of the application for registration, whether the trade mark is misleading.[16]

On the other hand, it is not required that the sign be false; it suffices that it is capable of misleading the consumer.[17] Thus, on the one hand, cases in which the signs are not taken seriously by the public are excluded from the application of this impediment and, on the other hand, cases where the signs, while not being directly and expressly inaccurate, may mislead the public are covered by this impediment.

It should also be noted that deception must relate to aspects which are relevant for influencing the economic behaviour of the consumer.[18]

3. The revocation of the registration of marks which are superveniently deceptive
It may also happen that a trade mark, which was not misleading at the time of (the application for) registration, becomes deceptive after registration (supervening deception). Note that the validity of the registration is not in question here, as the sign was not originally misleading. It became misleading after registration. However, if the right conferred by registration to its holder is not to be maintained, it is subject to revocation.

In addition to requiring that the trade mark itself be deceptive, it is necessary that the deceptive character has resulted from the use that the owner, directly or indirectly (e.g. through licensees), has made of it.

The assessment of the deceptive character of the trade mark is controversial. In fact, some doctrine holds that the assessment of the supervening deceptive character is made by comparing the (semantic) meaning of the trade mark with the goods or services marked: if there is a change in the meaning of the trade mark and/or a change in the characteristics of the goods or services marked and if they are the result of the use that the owner (or a third party with his consent) makes of the trade mark, the registration is subject to revocation.[19] However, other authors argue that the rule should not be limited to these cases (of scarce practical application), extending its scope to the very serious cases in which trade marks are used in misleading advertising.[20]

The first hypothesis, which we consider to be the one that matches the interpretation of the rules contained in the CPI and in the EUTMR [(see, respectively, Articles 268, no. 2, paragraph b) and 58, no. 1, paragraph c)], has been accepted by the Court of Justice, highlighting the limitations of these provisions with regard to effectively combating consumer deception. Thus, as we have argued in previous academic works, the complementarity between these rules and those on unfair competition and consumer protection is necessary.[21]

Final remarks

“Green” brands, which are increasingly attractive given consumers’ growing awareness of sustainability, may be important allies in combating pollution, climate change and the destruction of several ecosystems on Earth[22] to the extent that they help them choose products or services that respect the guiding principles of the SDGs. It is important, however, to ensure that green branding does not correspond in practice to eco-badging, i.e., that consumers are not misled about the true “green” attributes of the trade mark. This goal is to some extent guaranteed by trade mark law, which, for example, regulates guarantee or certification marks and prevents the registration of misleading signs as trade marks and provides for, on the one hand, the invalidity of those which have been wrongly registered, and, on the other, the revocation of those which have subsequently become deceptive). However, it does not preclude the complementary application of other legal provisions, such as the legislation on unfair commercial practices, unfair competition and misleading advertising.

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* This text is a translation of the brief article that served as the basis for the author’s intervention, on 12 July 2022, in the Luso-Brazilian Congress on Law and Sustainable Development, organised by the School of Law of the University of Minho (Portugal) and Faculty of Law of Mackenzie Presbeterian University (Brazil), which will be published (in Portuguese) in the proceedings of the said Congress.

[1] WIPO, “World Intellectual Property Day 2020 – Innovation for a Green Future”, https://www.wipo.int/ip-outreach/en/ipday/2020/green_future.html.

[2] Lifestyle of health and sustainability consumers.

[3] On this subject, see Massimo Maggiore, “Can Trademarks Ever Be Green? Between Green-Branding and Greenwashing”, International Trademark Association, March 10, 2021, https://www.inta.org/perspectives/can-trademarks-ever-be-green-the-line-between-green-branding-and-greenwashing/.

[4] Eric Lane, “Consumer Protection in the Eco-mark Era: A Preliminary Survey and Assessment of Anti-Greenwashing Activity and Eco-mark Enforcement”, 9 Journal Marshall Rev. Intell. Prop. l. 742 (2010).

[5] EUIPO has released the Green EU Trade Marks Report, prepared by the European Observatory on Infringements of Intellectual Property Rights, available at: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/reports/2021_Green_EU_trade_marks/2021_Green_EU_trade_marks_FullR_en.pdf. See Eleonora Rosati, “Green with… IP”, EUIPO, January 18, 2022, https://euipo.europa.eu/ohimportal/en/news?p_p_id=csnews_WAR_csnewsportlet&p_p_lifecycle=0&p_p_state=normal&p_p_mode=view&p_p_col_id=column-1&p_p_col_count=2&journalId=9135001&journalRelatedId=manual/.

[6] Eleonora Rosati, “Green with… IP”, 7 et seq. Based on this study, it is stated that of the approximately 46,700 EU trade mark applications received in 1996, 1,588 were green marks and since then the increase in green marks has been continuous, apart from 2001 and the period between 2011 and 2014. By 2020, the number of EU green mark applications approached 16,000 and the main countries with EU green mark applications are Germany, Spain, France, Italy and the Netherlands.

[7] European Commission, “Press Release – Screening websites for «greenwashing»: half of green claims lack evidence”, Brussels, 2021, https://ec.europa.eu/commission/presscorner/detail/pt/ip_22_394. Following the sweep of green claims in various sectors of activity (e.g., clothing, cosmetics and household equipment), national consumer protection authorities found that in 42 % of cases the claims were exaggerated, false or misleading.

[8] In Portugal, vd. DL no. 57/2008, of 26 March.

[9] Approved by DL no. 110/2018, of 10 December.

[10] Regulation (EU) 2017/1001, of 14 June 2017.

[11] Paolo Auteri, Territorialità del diritto di marchio e circolazione di prodotti «originalli» (Milano: Giuffrè Editore, 1973), 405.

[12] For further developments, see Maria Miguel Carvalho, “Marcas colectivas – Breves considerações”, in Direito Industrial, ed. José de Oliveira Ascensão (Coimbra: Almedina, 2008), 215-249 and also Maria Miguel Carvalho, “Artigo 215”, in Código da Propriedade Industrial Anotado, ed. Luís Couto Gonçalves (Coimbra: Almedina, 2021), 859 et seq.

[13] Maria Miguel Carvalho, “Artigo 217”, in Código da Propriedade Industrial Anotado, ed. Luís Couto Gonçalves (Coimbra: Almedina, 2021), 865 et seq.

[14] See Article 218, no. 1 and paragraph 2, c) CPI. As regards the EUTMR, see Article 85, no. 1 and no. 2.

[15] Martínez Gutiérrez, Ángel – La marca enganosa (Civitas: Madrid, 2002), 68.

[16] Maria Miguel Carvalho, A marca enganosa (Coimbra: Almedina, 2010), 211 et seq.

[17] Even if the Court of Justice has a very narrow interpretation of that requirement, requiring a sufficiently serious risk of deception.

[18] Maria Miguel Carvalho, “A aferição da deceptividade originária da marca à luz da jurisprudência recente do Tribunal de Comércio de Lisboa”, in Estudos em Homenagem ao Professor Doutor Carlos Ferreira de Almeida, ed. José Lebre de Freitas, et al. (Coimbra: Almedina, 2011), 475-485, 479 et seq.

[19] See Manuel Nogueira Serens, “Aspectos do princípio da verdade da marca”, Boletim comemorativo do 75.º tomo do Boletim da Faculdade de Direito, Coimbra, 75 (2003): 662. For further developments, see Maria Miguel Carvalho, A marca enganosa, 319 et seq.

[20] Luís Couto Gonçalves, Função distintiva da marca (Coimbra: Livraria Almedina, 1999).

[21] Maria Miguel Carvalho, “A cessão de marcas patronímicas e a proibição de decetividade das marcas – Ac. do TJ (Terceira Secção), de 30.03.2006, Proc. C-259/04”, Cadernos de Direito Privado, Braga, 14 (2006): 130.

[22] Eleonora Rosati, “Green with… IP”.

Picture credits: Julius Silver on Pexels.com.