POV: GOING GREEN? A TRADE MARK PERSPECTIVE

Terms like “green,” “sustainable,” and “eco-friendly” are powerful marketing tools that companies use to captivate environmentally conscious consumers. These trade marks can colloquially be referred to as “green” trade marks. While “green” trade marks offer exciting opportunities for savvy businesses, they also come with hidden risks.

LAUDATORY TERMS

Laudatory terms express praise. Phrases like “eco-friendly” or “sustainable future” are laudatory and usually consist of words or phrases that should be available to all traders. There is a high risk that if you applied to register these phrases, they would be refused because they are not distinctive enough to qualify as a trade mark and should be freely available to all traders to use.

The United States Patent and Trademark Office (USPTO), for example, has denied several “green” trade mark applications, including GREEN CEMENT, for an environmentally friendly cement, and ZERO WASTE TEE, for clothing made from recycled material. The European Union follows a similar approach to the United States, coining terms such as “eco” and “green” as descriptive when applied to goods and/or services claiming to be environmentally friendly.

In South Africa, the mark SUSTAINABLE ECO-TOURS covering tourism services was refused on the basis that it was not capable of distinguishing the applicant’s services from those of other traders. Many proprietors are now opting to file their “green” trade marks as distinctive logos and by entering disclaimers in respect of the descriptive words or phrases to confirm that they do not claim any exclusivity in these descriptive words or phrases. In such cases, the trader’s rights will vest in the format of the logo and not in the descriptive words and phrases. This approach strikes a good balance between harnessing the marketing power of “green” trade marks and ensuring that other traders are not deprived of using words and phrases that should be available to all traders.

Traders should also consider adopting trade marks that are suggestive, rather than descriptive, to indicate the environmental benefit their brand offers. For example, outdoor lifestyle brand, Patagonia, has successfully registered the trade mark BETTER THAN NEW® to advertise its clothing, and clothing company, Everlane, has registered trade marks for RECASHMERE® and REWOOL® for products made from recycled textiles.

Another effective strategy for companies aiming to highlight their environmental credentials is to use a certification mark alongside their already registered trade mark. A certification mark is owned by an entity that sets specific standards and testing methods that companies must adhere to, to be permitted to use the mark.

Certification marks offer a way to establish a brand’s commitment to sustainability, without having to register a “green” trade mark. Consumers increasingly rely on certification marks to guide their purchasing decisions, as certification marks are trusted indicators of environmentally responsible practices.

GREENWASHING

Greenwashing is a marketing technique where companies make bold claims and boast about the sustainability achievements of their business or products, without any evidence to support such claims or achievements.

Traders who adopt trade marks that either directly or indirectly make claims which cannot be substantiated are at risk of being in breach of the Code of Advertising Practice which requires that advertisers must be able to substantiate any claims that are capable of objective substantiation with current documentary evidence that emanates from a source which is independent, credible and an expert in the field. There is also the risk that the use of the trade mark could contravene regulatory provisions governing that specific product.

In addition, such a trade mark could be refused registration by the Registrar or opposed or cancelled by an interested third party on the basis that the use of the trade mark is contrary to law or it has been used in a manner that is likely to cause consumer confusion or deception.

When thinking about adopting a catchy “green” trade mark to market your goods and services, it is critical to consider whether you are able to substantiate the claims being made in the trade mark. It is also important to bear in mind that a trade mark registration cannot be relied upon as a defence when making claims that cannot be substantiated.

As the demand for environmentally responsible products and services grows, companies must carefully navigate the filing and use of their “green” trade marks. If not, it could result in unsuccessful trade mark applications, potential lawsuits and backlash from consumers, which could ultimately tarnish their reputation. Three important factors to consider are:

1. you cannot register terms or phrases that are entirely laudatory or descriptive. You can, however, register terms that are suggestive or register those terms and phrases as distinctive logos;
2. if the trade mark makes a claim that is capable of objective substantiation, you must hold evidence to prove that claim; and
3. if possible, use certification marks in addition to your trade mark to indicate a brand’s commitment to genuine environmental sustainability.

With thoughtful strategies, companies can successfully navigate the complexities of “green” trade marks.

Co-author
Robyn Broodryk, Candidate Attorney

Alissa Naran

Partner | Trade mark Attorney

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