ANALYSING VALIDITY OF TRADEMARK FOR GREEN

LABELS

Adrija Datta (C-008) ; B.B.A., L.L.B.,

Sem IX
Submitted to : Professor Naved Ansari

PLAGIARISM DECLARATION

1. I know that plagiarism means taking and using the ideas, writings, works or inventions of
another as if they were one’s own. I know that plagiarism not only includes verbatim copying, but
also the extensive use of another person’s ideas without proper acknowledgement (which includes
the proper use of quotation marks). I know that plagiarism covers this sort of use of material found
in textual sources and from the Internet.
2. I acknowledge and understand that plagiarism is wrong.
3. I understand that my research must be accurately referenced. I have followed the rules and
conventions concerning referencing, citation and the use of quotations as set out in the
Departmental Guide.
4. This assignment is my own work, or my group’s own unique group assignment. I acknowledge
that copying someone else’s assignment, or part of it, is wrong, and that submitting identical work
to others constitutes a form of plagiarism.
5. I have not allowed, nor will I in the future allow, anyone to copy my work with the intention of
passing it off as their own work.

Adrija Datta

ACKNOWLEDGEMENT

I would like to thank Professor Naved Ansari for his guidance during this project on "Analyzing
the Validity of Trademarks of Green Labels". I will also take this opportunity to thank my
community dog Togo who reminds me to work for a cleaner and greener world.
INDEX

ACKNOWLEDGEMENT

DECLARATION

ABSTRACT 1
INTRODUCTION 1
DESCRIPTIVENESS 2
DECEPTION 4
CONCLUSION 5
Analysing the validity of trademark of Green Labels in India, EU and USA

-Adrija Datta (C-008, BBA LLB)

Abstract

The purpose of this paper is to ascertain the challenges faced by green labels in being
granted a trademark. In this context, green labels refer to those trademarks or brand names
(if unregistered) which espouse qualities of eco-friendliness, through the trademark or the
brand name itself. The problem with green labels is the limited vocabulary available to
describe eco-friendly sentiments, thus running the risk of being general and descriptive which
is dissuaded in trademarks. Secondly, with companies jumping on the sustainability
bandwagon, green labels maybe used as a tool for greenwashing. The paper tries to answer
two questions. First, whether green labels run the risk of being descriptive as it usually draws
from a similar set of words. Second, whether a green label’s trademark claim be rejected, if
such claim is viewed as deceptive to eco-friendliness.

Keywords: descriptive trademarks, deceptive trademarks, green labels, sustainability,

trademarks

Introduction

Green labels can substantiate sustainability claims through two ways. First, by the use of
collective marks such as “Ecomark” or “Rainforest Alliance”. Secondly, through individual
brand names which espouse eco-friendliness such as “Mama Earth” or “Earth Rhythm” or
“No Nasties”. The paper focuses on the latter of these ways i.e., the use of individual product
or service trademarks to espouse eco-friendliness. Products and services trademark use
wordmark or picture mark to make sustainable claims. Common words include “Eco”,
“nature”, “green”, “earth” or “organic” either being used as moniker or as a prefix or suffix to
another word.1 Using pictures or graphics of plants or clean water is also regularly used to
promote eco-friendliness.

The growing sustainability movement has seen a rise in green labels. While studies on the
number of green labels have been limited, a recent report published by EUIO(European
Union Intellectual Property Office) in 2020 found that, it received 1,588 applications for the

1
Massimo Maggiore, Can Trademarks Ever Be Green? Bet ween Green -Branding and
Greenwashing, INTERNATIONAL TRADEMARK ASSOCIATION (Jul y 27, 2022),
https://www.inta.org/perspectives/ can -trademarks-ever-be-green-the-line-bet ween -green -
branding-and-greenwashing/.
registration of green EU trade marks in 1996 and approaching 16,000 such applications in
2020, with annual growth reported most years in between. 2 Green filings accounted for 11%
of all EU trade mark applications last year compared with just 4% of the total applications
recorded in 1996.3

Given the increasing popularity of green trademarks, it is important to discuss the validity of
green marks based on two particular grounds: descriptiveness and deception about
environmental performance of the product or service.

Descriptiveness

Green labels often use a common set of words like “nature”, “green” and “eco”. The choice
of words is even narrower as a specific industry targets a specific environmental attribute. For
example, car manufacturers would obviously be keener on using words that describe green
energy. Similarly, electrical appliances would like to portray themselves as energy saving
while the attributes targeted by the skincare industry would be cruelty free and recyclable
container. Arguably, all of these words used to portray certain qualities would be
considered descriptive. Descriptive words may not be distinct enough to warrant trademark
protection. However, countries have opined opposingly.

In India, green brands are often granted trademarks when combined with other words (either
unique or descriptive. For example, Green India is a registered trademark by a tours and
travel company. 4 In Natures Essence Private Limited v. Protogreen Retail Solutions Private
Limited, the court held that company using the name “nature’s tattva” infringed the
trademark “Nature’s Inc” even though they were dealing in different product, although the
category of products was the same.5 The Delhi High Court held that “nature” is a descriptive
word. However, when it is used in conjunction with "Inc.", or "Essence", it assumes a definite
and distinct - as well as distinctive - connotation and meaning, which is totally different from
"Nature" per se. Similarly, in Mother Sparsh Baby Care Pvt Ltd Versus Aayush Gupta, it was
held that “Plantpowered” is a distinct trademark. 6 The court held that “The words ‘PLANT’

2
Green EU trade marks Analysis of goods and services specifications, EUIPO (Sep., 2021),
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.
3
Ibid.
4
Trademark Status Application, COMPANY VAKIL(July 27, 2022),
https://www.companyvakil.com/trademarksearch/GREEN-INDIA/525254.
5
CS(COMM) 581/2020 & I.A. 12750/2020.
6
CS (COMM) 129/2022 & I.As. 3107-08/2022.
and ‘POWER’ by themselves, when considered as standalone words, may be descriptive.
However, when used in conjunction with each other for identical products, there is likely to
be confusion between the Plaintiff’s products and Defendant’s products”.

Contrary to India’s standpoint, the position taken in Europe is that a mere combination of
elements, each of which is descriptive of characteristics of the goods or services themselves,
remains descriptive. However, if due to the unusual nature of the combination in relation to
the goods or services a combination creates an impression that is sufficiently far removed
from that produced by the mere combination of meanings lent by the elements of which it is
composed, that combination will be considered more than the sum of its parts.

The EU has a long list of green labels it has rejected for green brands on grounds of
descriptiveness. Some of these brands include: EcoTrend ECOLAB, EcoPerfect, EcoDoor,
EcoPro, EcoTherm, EcoTech, EcoPreform, EcoFinishes , GreenWorld and GreenLine and
Carbon Green.7

However, the EUIPO has held that GreenSea to be a valid trademark in the categories such as
advertising, pharmaceuticals and non-medicated cosmetics.8 Similarly, when an appeal was
filled for rejection of trademark of “EcoSilver”, the Board of Appeal granted them the
trademark stating that the examiner had failed to consider how silver in itself could be
ecological (as it is not the standard industry practice to have eco-friendly silver.9

In the USA, the USPTO(United States Patents and Trademark Office) has evolved to hold
that “green” itself must typically be disclaimed due to its descriptive or suggestive
qualities. 10The regulatory body has also frequently treated marks as descriptive if they
connote the environmental friendliness of a product or service. For example, “Green Sprouts”
was refused registration for baby foods on the ground that it would be regarded as an
environmentally friendly version of goods marketed or intended to be marketed under the
trademark “Sprout”.11 Similarly, the term “ECO WICK” for candles was found to merely

7
Guidelines For Examination Of European Union Trade Marks, EUIPO (Feb., 2017),
https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Draft_Guidelines_WP_1_2017/08_part_b
_examination_section_4_AG_chap_4_article_7-1-c_clean_2017_en.pdf.
8
Ibid.
9
EcoSilver is eligible as a European trademark for precious metals, INTELLECTUAL PROPERTY PLANET,
(July 27, 2022) https://intellectualpropertyplanet.wordpress.com/2017/11/10/ecosilver-is-eligible-as-a-european-
trademark-for-precious-metals/
10
David E. Adelman & Graeme Austin, Trademarks and Private Environmental Governance, 93 NOTRE
DAME L. REV. 709 (2018).
11
In re I Play.Inc., 2013 WL 2951810.
connote “ecologically positive properties” and was refused registration.12 Applying the
doctrine of foreign equivalents, the Board rejected an application for VERDE for an
electronic power supply technology on the basis that it was the Spanish word for “green” and
would be read to identify “environmentally friendly products and services in the electrical
supply industry.”.13

Deception as to nature of good

Usually, greenwashing claims are addressed by the unfair trade practices laws, or the
advertisement laws of the country. For example, in India, In India, using the word organic for
food requires companies to person shall manufacture, pack, sell, offer for sale, market or
otherwise distribute or import any organic food unless they comply with the requirements
laid down under these regulations. However, when the name of the label is itself is being used
to falsely advertise eco-friendliness, can trademark laws step in and reject the trademark
claims on the grounds of deception. Trademark laws generally do not allow trademarks which
can confuse or deceive the public are not allowed.

The extension of trademark laws to greenwashing claims is unclear in India. However, in

the EU trade mark legislation prohibits the registration of signs which are of such a nature as to
deceive the public; for instance, as to the nature and quality of the G&S which encompasses
environmental claims.14 Furthermore, the trademark law is supported by other labelling laws. For

example, most EU countries have guidelines set recommendations on the use of specific
terms, in order to prevent inaccuracy in the meaning of the claim. Typical terms that are
defined, or that are subject to certain conditions, are: “degradable”, recyclable”, “reusable”,
“bio”, “non-toxic”. Some guidelines set requirements for the use of certain terms referring to
the absence or minimised presence of harmful characteristics, such as “x-free”, “free of x”,
“zero x”.15 Similarly, in EU the use of words like “eco” or “bio” by food products requires
companies to adhere to some minimum standards. 16

12
In re MVP Grp. Int’l, Inc., 2013 WL 3001476.
13
In re Verde Power Supply, Inc., 2012 WL 4361423.
14
Eleonara Rosati, Green with… IP, EUIPO (July 27,2022),
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/.
15
GFK Belgium, Consumer Market Study On Environmental Claims For Non-Food Products, EUROPEAN
COMISSION (July 2014),
https://ec.europa.eu/info/sites/default/files/study_on_environmetal_claims_for_non_food_products_2014_en.pdf
16
Ibid.
Even USA has a similar, and a more intresting viewpoint than that of EU. In 2013, the
USPTO rejected the trademark for “Green Seal” which they tried to register for a tape.17 The
USPTO examining attorney refused registration on the ground that the mark was deceptively
misdescriptive under Section 2(e)(1) of the Lanham Act and comprises deceptive matter
under Section 2(a) in that it falsely and materially indicates that the applicant’s goods are
environmentally friendly when, in fact, they are not. Interestingly, the company was not
trying to make any eco-friendly claims, they were expanding their line of pre-existing tapes
named Red Seal and Blue Seal, and Green Seal seemed like an obvious choice to them.
However, the Board held that the word “‘green’ directly conveys information to potential
consumers that the tape products are environmentally friendly.” the Board concluded that the
perceived green quality of the tape products would be likely to affect the purchasing
decisions of relevant consumers.

The position in EU and the USA suggests a new trademark regime where trademark laws is
being used to combat greenwashing. However, this might be a weak measure as a trademark
rejection does not prevent a company from using the green label, and not prevent it from
freely making false claims. Neither would it be possible for the patent office to attest to the
veracity of the claims.

Conclusion

Companies today want to capitalise on the sustainability movement. Use of green labels may
help with marketing however protecting the same through Trademark Law can vary in
difficulty. In India, such labels can be protected by combining two or more descriptive words.
But in Europe even a combination of words won’t suffice and in the USA any kind of words
that suggests eco-friendliness won’t stand on the grounds of descriptiveness. Perhaps, India
in the future, with the increase in green label trademark application start echoing the
sentiments of Europe and the USA’s trademark law.

As for deception, trademark laws can supplement advertising laws of various countries to
check greenwashing claims and to avoid confusion among the public, as has been done in EU
and the USA. Supplementing the advertisement law will help balance the drawbacks of
trademark law.

17
In re Kitaru Innovations Inc., 2013 WL 3090489.