This Insight explores the evolving landscape of certification marks and trademark law in promoting sustainable business practices in the European Union (EU). Through an analysis of certification marks, the absolute ground for refusal, and the revocation ground of “deceiving the public”, this discussion sheds light on the limitations and challenges of trademark law in effectively addressing sustainability goals.
CERTIFICATION MARKS – ARE THEY A “TOOL”?
Certification marks serve as a “controlled quality” mark, distinguishing between the ownership of the mark and its use, which is essential to ensure a “quality assurance function”. These marks are favoured by intellectual property scholars as the preferred option for companies seeking to credibly underpin their sustainability commitments, as they are a “tool” to ensure compliance with Environmental, Social and Governance (ESG) objectives, provided that specific sustainable objectives are included in the regulation governing their attribution and use.
In practice, however, recent legislative proposals such as the Green Claims Directive do not mention certification marks (or even trademark law in general). Instead, the Directive refers to certification schemes, involving an independent third-party verification of the scheme owner and the trader, which is a departure from certification trademarks. The level of control and regulation imposed by this Directive, as well as the requirement for third-party verification, is very different from certification marks.
Indeed, certification marks should ensure a certain level of quality of the products bearing the mark. However, their exclusion from the proposed Directive casts doubt on their effectiveness in preventing unsubstantiated green claims. This gap between theory and practice calls for a reassessment of the effectiveness of certification marks as a tool for promoting sustainability goals.
LIMITATIONS ON “DECEPTION OF THE PUBLIC”
While trademark law does not explicitly aim to prevent unfair commercial practices, paragraph g) of Article 7(1) of the European Union Trade Mark Regulation (EUTMR) serves to prohibit the registration of inherently deceptive marks. Yet the claim that trademark law facilitates sustainable business practices by reducing consumer susceptibility to deception seems inconsistent with the constraints of this legal framework.
According to the European Union Intellectual Property Office’s (EUIPO) Guidelines, a sign’s deceptiveness depends on two key criteria: first, the public’s perception that the sign conveys a clear message about the nature, quality, or other characteristics of a product, framed in a way that is conducive to deceptive use; and second, its influence on the economic behaviour of the relevant public. The assessment of intrinsic deceptiveness primarily involves comparing the meaning of the sign with the list of goods or services classified according to the Nice Classification. In cases where signs have been used in trade prior to the application for registration, neither the law nor the interpretations of the Court of Justice of the European Union (CJEU) attach any relevance to such use. Should the law therefore broaden the assessment of the original deceptiveness of the sign and extend it beyond its intrinsic nature if the sign has previously been used in a commercial context?
Additionally, environmental claims are understood to be voluntary statements or representations in any form (including brands and labels) implying that a particular product or company has a positive, neutral, or lower environmental impact than others. Greenwashing refers to environmental claims that are unsubstantiated, false, or likely to mislead consumers.
Considering the above-mentioned guidelines, the EUIPO does not have the means to verify the sophistication of greenwashing tactics, which undoubtedly affects trademark law’s effectiveness in promoting Goal 12 (Responsible Consumption and Production) of the 2030 Agenda for Sustainable Development.
Consequently, the absolute ground for refusal proves to be of limited application in this context, as it cannot effectively distinguish genuinely sustainable trademarks from those that engage in greenwashing practices.
In contrast, the provision on “deception of the public” as a ground for revocation (Article 58(1)(c) of the EUTMR) emphasises the importance of the trademark holder’s use of the sign.
Although the revocation of a trademark that has been improperly used in the course of trade has a positive impact on sustainability, the removal of a trademark from the register does not automatically prevent its use in the course of trade. This ground for revocation is intended to maintain the integrity and credibility of the trademark registration system.
CONCLUSION
This Insight examines the effectiveness of EU trademark law in promoting sustainable business practices. By examining certification marks, the absolute ground for refusal, and the revocation ground of “deceiving of the public”, it reveals various limitations. These findings highlight discrepancies between theoretical ideals and practical application, in particular with regard to the effectiveness of certification marks in addressing greenwashing and the narrow scope of the “deception of the public” assessment method as a ground for refusal. It also identifies the need for a broader consideration of contextual factors, such as the sophistication of greenwashing tactics and the limitations of trademark offices in verifying claims. Ultimately, trademark law only partially (and superficially) ensures Goals 9 (and 12) of the 2030 Agenda for Sustainable Development.
