ENVIRONMENTAL CLAIMS IN A TRADEMARK ENVIRONMENT – NEW STANDARDS PROPOSED BY EU COMMISSION PUT YOUR TRADEMARKS AT RISK

EU COMMISSION’S LEGISLATIVE PROPOSALS

You may have read in the newspapers that the European Commission has launched two initiatives to protect consumers from untrustworthy or false environmental claims that prevent them from shopping more sustainably[1] and to introduce further requirements in relation to environmental claims made about products and businesses, both in a B2C and a B2B context[2].

The main objective of both these initiatives is to ensure that claims on the environmental performance of products and businesses are reliable, comparable and verifiable across the EU, thereby reducing ‘greenwashing’ (companies giving a false impression of their environmental impact), allowing consumers, companies, investors, etc. to make more sustainable decisions and increasing consumer confidence in green labels and information.

Pursuant to these two initiatives, any business or organisation will among others be prohibited from (1) using or displaying a sustainability label[3] which is not based on a certification scheme[4] or not established by public authorities or (2) making an environmental claim[5] without proven science-based methodology, without an independent monitoring system or – at least for generic claims such as ‘eco’ or ‘green’ – without recognised excellent environmental performance (such as under the EU Ecolabel or EN ISO 14024 type I ecolabelling schemes).

IMPACT ON YOUR ORGANISATION’S TRADEMARKS

Without a doubt, these two initiates will have an impact on how your organisation makes use of trademarks to set apart or promote your products or services as being environmentally friendly or sustainable. Such trademarks would then either fall under the definition of ‘environmental claim’ or ‘sustainability label’. Moreover, as an environmental claim may also be contained in a sustainability label, these qualifications are clearly not mutually exclusive.

Many companies use and/or have registered trademarks alluding to certain environmental aspects of their products or services. Over the course of years, companies have even launched their own sustainable sourcing or sustainable production programs aiming to inform their customers about their initiatives and safeguards in rendering or maintaining their products and activities environmentally responsible. The same accounts for economic interest groupings aiming to promote the use of products manufactured by the sector concerned based (solely or also) on the environmental aspects of these products.

These companies and interest groupings make use of proprietary trademarks to distinguish their programs, products or services from those of other companies or industries. As such, these trademarks are mostly registered as an individual or collective trademark, i.e. to indicate the origin of the products/services marketed under these trademarks as coming from one company or a group of companies belonging to one sector.

Under the envisaged rules on environmental claims and sustainability labels, the use and corresponding registration of these trademarks may however be at risk. As a matter of fact, these trademarks mostly contain, either in whole or in part, claims that could also be regarded as environmental claims and/or sustainability labels under the abovementioned legislative initiatives.

For trademarks with mere environmental claims, it is often not clear whether the claim can be substantiated under a methodology that complies with the requirements set out in the proposed directives nor whether the trader’s environmental commitments and targets are independently monitored. Your organisation will hence be required to be much more transparent about this when using environmental claims in your communications to consumers, even if these claims are part of your (registered) trademarks.

For trademarks corresponding to the definition of a sustainability label but registered/used as an individual or collective trademark, the use thereof is often not subject to a specific third-party certification scheme that is open to all traders. Also, compliance with this certification scheme is then not monitored by another independent third party.

Complying with the proposed requirements for sustainability labels implies that many organisations will lose or have to renounce their rights to their registered individual or collective trademarks, whether they are used in connection with proprietary sustainable sourcing or production programs or in connection with an economic interest grouping’s promotional activity.

If your organisation would wish to continue the use of trademarks as a sustainability label, you will hence need to allow that other companies use this mark as well and that a third party certification scheme owner sets out the rules for compliance. This third party will then also be the appropriate entity to file a new registration for the trademark as a certification mark.

As the rules regarding certification marks are different to those governing individual and collective marks under the EU Trademark Regulation and the trademark laws of the EU member states, we strongly recommend you to seek early advice from your trademark expert to properly prepare for the new rules that the EU is willing to set and the possible impact they may have on your business.