Registered trade marks containing green claim wordings are likely to ensure consumer trust for the designated goods/services. Therefore, it is critical for the trade mark authority to carefully examine such trade marks to prevent misleading advertising.

In this article, Melanie Zhu of the MARQUES China Team discusses the current practice and criteria for examining such trade marks in mainland China, with a focus on the challenges and recent trends.

Definition of green claim trade marks

According to EU Directive 2024/825 of 28 February 2024, green claim trade marks include trade marks that contain words making generic environmental claims, i.e. ‘environmentally friendly’, ‘eco-friendly’, ‘eco’, ‘green’, ‘nature’s friend’, ‘ecological’, ‘environmentally correct’, ‘climate friendly’, ‘gentle on the environment’, ‘carbon friendly’, ‘carbon neutral’, ‘carbon positive’, ‘climate neutral’, ‘energy efficient’, ‘biodegradable’, ‘biobased’ or similar statements as well as broader statements such as ‘conscious’ or ‘responsible’ that suggest or create the impression of excellent environmental performance.

The aim of this directive is to ensure that environmental labels and claims are credible and trustworthy, which will allow consumers to make better-informed purchasing decisions.

There is no definition and no specific regulation concerning green claim trade marks in mainland China at this stage.

Current practice in mainland China

In accordance with the China Trade Mark Law (Article 10.1.7), Implementation Regulations, Trade Mark Examination and Adjudication Guide 2021, trade marks encompassing words that are likely to mislead the public about the function, quality, origin, effectiveness etc of the designated goods/services should not be granted. In this sense, we believe green claim trade marks should be regulated by this Article.

The CTMO (China Trade Mark Office) maintains the principle that trade marks should distinguish the origin of the goods/services without implying quality or effectiveness.

In this sense, the CTMO has become increasingly strict with trade marks containing green claim wordings, rejecting them on absolute grounds.

Even if applicants could provide evidence to prove the goods/services are environmentally friendly, the CTMO would still reject such green claim trade marks on the ground that it is beyond the CTMO’s examination scope and capacity to check and ensure the goods/services do have claimed features and effectiveness, and also beyond its capacity to inspect the goods/services in commerce to ensure they still have the claimed effective during the valid period of the registered trade marks.

Search findings

While it is challenging to determine the exact number of registered or rejected green claim trade marks due to the vast array of expressions in Chinese, we tried most popular and typical green claim words in both English and Chinese expressions, and summarize the findings for consideration:

eco-friendly and 环保 (eco-friendly in Chinese)

• Applications for the identical “eco-friendly” or “环保” were all rejected.
• There are around 50 registered marks encompassing “echo-friendly” in Class 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 17, 18, 19, 20, 21, 24, 25, 26, 28, 29, 30, 31, 32, 35, 36, 39, 40, 41, 42.
• There are over 1100 registered marks encompassing “环保” in Class 1, 2, 3, 4, 5, 6, 7, 8, 9, 10,11,12, 13, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45.

energy efficient/saving and 节能 (energy efficient/saving in Chinese)

• Applications for the identical “energy efficient/saving” or “节能” were all rejected.
• There are around 50 registered marks encompassing “energy efficient/saving” in Class 4, 6, 7, 9, 10, 11, 12, 16, 28, 35, 37, 38, 39, 40, 41 ,42 ,45.
• There are over 1400 registered marks encompassing “节能” in Class 1, 2, 3, 4, 5, 6, 7, 8, 9, 10,11,12, 13, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45.

Sustainable and 可持续 (sustainable in Chinese), recyclable & 可循环 (recyclable in Chinese)

• Surprisingly, there are 5 registrations for the identical “Sustainable” and/or its corresponding Chinese in class 4, 9, 12, 18, 36, 38, as well as 2 registrations for the identical “recyclable” in class 1, 5 but none for identical “recyclable in Chinese” on the registrar.
• There are over 230 registered marks encompassing “sustainable” and over 20 registered marks encompassing “可持续” in various goods and services classes.
• There are fewer than 10 registered marks encompassing “recyclable” and also fewer than 10 registered marks encompassing “可循环/可再生” in various goods and services classes.

Green and 绿色 (green in Chinese)

• This is a tricky one, as “green” inherently refers to a kind of colour, but is now more and more used to describe the clean energy, pollution-free foodstuffs etc. This secondary meaning of “green” made it a sensitive word to be included in a trade mark. Though there are numerous registered trade marks that include “green” on the registrar, we have seen the CTMO began to reject applications for trade marks containing “green” in the classes of foodstuffs, energy and electric equipment in recent years

Observations and trends

Increasing stringency in trade mark examination. For the rejected applications for the trade marks composed of the above green claim wordings, it is unknown whether the rejections were due to being misleading (Article 10.1.7) or lack of distinctiveness (Article 11) as the refusal notifications are not made public.

Historical versus recent registrations. Almost all of the existing registrations composed of the above green claim wordings were granted at least eight years ago, while recent applications (either in English or in Chinese) were all rejected.

Lapse and Invalidation of green claim trade marks. Some existing registrations containing such green claim wordings were lapsed due to non-renewal, non-use cancellation or invalidation in recent years.

Decreasing registrations and global alignment. A noticeable trend is the decreasing number of registered marks containing these green claim wordings, indicating the CTMO is aligning with international standards to ensure that environmental claims are credible and not misleading.

Conclusion: caution needed

In mainland China, the examination criteria for trade marks containing green claim wordings have become more and more stringent in recent years, reflecting a commitment to prevent misleading consumers and stick to the fundamental function of trade marks.

While there is no specific regulation for green claim trade marks, the existing legal framework provides a basis for the CTMO to reject trade marks that may mislead the public about the environmental performance of goods or services.

Applicants should be cautious when developing new trade marks to avoid including the green claim wording, relying on marketing activities to deliver the environmental technology/performance of the products/services. This strategy ensures compliance with trade mark laws while effectively conveying the eco-friendly attributes of their offerings.

Melanie Zhu leads the trade mark team for Rouse International in Shanghai and is a member of the MARQUES China Team

As previously mentioned on the Class 46 blog, EUIPO is hosting a geographical indications (GI) conference titled “Safeguarding our Heritage, Cultivating our Future” on 28 and 29 January 2025.

The conference is organised in collaboration with the European Commission (the Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, DG GROW, and the Directorate-General for Agriculture and Rural Development, DG AGRI).

It is a hybrid event and will cover the latest developments in both craft and agricultural GIs. In-person capacity has been reached, but it is still possible to participate online.

There will be simultaneous translation into English, Spanish, Italian, French, and German both for attendees in Alicante and those joining online.

The full programme is available on EUIPO’s website here.

You can register to join online here. The event is free of charge.

To accompany the event, a photography exhibition is being held at Espacio Séneca, Alicante. The exhibition includes more than 120 stunning images of GIs, showcasing the stories behind iconic products such as Murano glass, Solingen cutlery, cheeses and wines. Entry is free.

The 81st ICANN meeting (ICANN 81) was held in Istanbul, Türkiye, in November 2024, offering a significant platform for global discussions on internet governance, domain names and online policy.

In this blog post, Mutlu Yıldırım Köse and Baran Güney provide some key insights from the conference. In another post, to be published next week, they will explore domain name disputes and online enforcement in Türkiye.

New gTLD Program

ICANN 81 provided a comprehensive review of the current state and future direction of the Domain Name System (DNS).

Key discussions centered on the ongoing developments in ICANN’s New gTLD Program, particularly Round 2 of the program. Round 2 focuses on the diversity and inclusivity of the DNS including universal acceptance of the new gTLDs as well as the inclusion of more Internationalized Domain Names (IDNs).

ICANN has confirmed that the application round for new gTLDs is expected to open in April 2026 in a time-limited window lasting 12-15 weeks. There will be restrictions applied. Private auctions, closed generics, and plural/singular delegations will not be allowed. It is aimed at improving fairness and transparency in the process.

Another key deliverable for Round 2 is the Applicant Guidebook (AGB). It outlines eligibility criteria, application processes, compliance obligations, objection procedures, applicant commitments, contracting terms and delegation steps.

The AGB reflects the culmination of studies and policy work that has been done over the last 10 years. ICANN aims to get the Board’s approval by 2025 for AGB, with the final public comment period scheduled for May 2025. The AGB is expected to be published by December 2025.  

RDRS

Another topic discussed at ICANN 81 was Registration Data Request Service (RDRS). The RDRS was introduced by ICANN as a response to challenges posed by the GDPR, which restricted public access to domain registration data.

The RDRS aims to connect requesters seeking non-public data with registrars who participate in the RDRS. However, participation is voluntary.

As of October 2023, about 60% of all gTLD registrations were covered by participating registrars. ICANN continues to monitor the effectiveness of RDRS and gathers data to improve the process, but the voluntary nature of registrar participation remains a limitation.

The RDRS has seen limited use, with only 2,109 total requests submitted in its first year, those were mostly from IP holders. Despite being globally available, the participation rate is low, and only 91 registrars are involved.

ICANN plans to run the service for two years and will assess its effectiveness afterwards, given the low volume of requests and concerns about its ability to fully address post-GDPR access challenges.

The primary reason for denial of requests is incompleteness in the submitted forms. Many requests are either denied or closed due to missing information. There is a need for better education for requestors, and guidance for registrars to improve the submission process and reduce these issues.

Mutlu Yıldırım Köse and Baran Güney are members of Gün + Partners in Turkey. Mutlu is also a member of the MARQUES Cyberspace Team

The EUIPO and European Patent Office (EPO) have published their latest joint report into the impact of IP rights on firm performance in the EU.

The research found that companies owning IP rights see a 23.8% higher revenue per employee and pay wages that are 22.1% higher on average.

While only around 10% of SMEs register IP rights, those that do so have 44% more revenue per employee compared to their counterparts without IP rights, while large firms enjoy a 16% increase.

The report also found that companies that own EU trade marks have 40.9% more revenue per employee, while those with designs have a 29.3% increase in revenue and a 24.8% rise in wages.

The research is based on data from 119,000 firms across all 27 EU Member States over the period 2013-2022. It follows similar studies published in 2015 and 2021.

The full report is available on the EUIPO website here. The Executive Summary can be read here. The image shows the cover of the report.

Places are still available for the next MARQUES Meet the Judges event, which takes place in Rome, Italy on Thursday 30 January 2025.

The event will be a roundtable discussion with eminent Italian judges, representatives of the Italian Patent and Trade Mark Office, members of the Italian and EUIPO Boards of Appeal and industry representatives.

The following judges and officials are already confirmed to take part:

• Hon. Paolo CATALLOZZI - Supreme Court of Cassation, First Civil Section
• Hon. Elisa FAZZINI - Court of Appeal, Milan, First Civil Section
• Hon. Silvia VITRÓ - President of the Court of Enterprises, Turin
• Avv. Prof. Gustavo OLIVIERI - Full Professor of Commercial Law, LUISS University, Rome, and Member of the Italian Board of the Appeals against the decisions of the Italian Patent and Trademark Office
• Avv. Cinzia NEGRO - Member of the 2nd and 3rd Boards of Appeal, Boards of Appeal, European Union Intellectual Property Office – EUIPO

Other moderators and speakers include: Avv. Vittorio Cerulli Irelli, Avv. Elisa Vittone, Avv. Flavia Tamburrini, Avv. Lorella Cipriani (BOTTEGA VENETA), Avv. Laurence Morel-Chevillet (BULGARI) and Dr. Andrea Chianura (LAVAZZA).

The meeting starts with a Buffet Lunch at 12.00 and concludes with a Drinks Reception at 18.30.

Topics covered in the discussion will include: proof of use, protection of well-known trade marks, including heritage brands, showing reputation and acquired distinctiveness through market surveys, patronymic trade marks, how to deal with gaps between market realities and the restrictive examination practices for non-conventional signs as trade marks.

The programme will also offer participants the chance to enjoy a special theatrical performance on “The Trials of Oscar Wilde”, written by Merlin Holland and John O’Connor.

This event will be conducted in Italian and will be held at the OFF/OFF Theatre, Via Giulia 20, Rome. Registration is €325 (MARQUES members) or €450 (non-members). For more information, and to reserve your place, please visit the dedicated page on the MARQUES website.

Spaces are filling up but there are still some available, so act now to reserve your place!

Photo of OFF/OFF Theatre from the theatre’s website

MARQUES wishes a Happy New Year to all readers of the Class 46 blog!

We already have a number of events planned for 2025. These include:

• Meet the Judges in Rome (Thursday 30 January): a round table with Italian and European trade mark judges. This will be conducted in Italian and will include a drinks reception and theatrical performance. Booking is already open and more information is here.
• Spring Team Meeting in Barcelona (13-14 March): MARQUES Council and Team members have been sent invitations to attend. More details are here.
• Question the Trade Mark Judges in London (25 March): Held in association with UCL IBIL, details coming soon!
• Annual Conference in The Hague (16-19 September): The programme for the 39^th MARQUES Annual Conference will be published in the Spring.
• Corporate Focus Group meetings (20 March and 6 June): MARQUES Corporate members will be sent invitations for these webinars soon.

More events and webinars will be announced during the year.

In addition, look out for new episodes of the Talking MARQUES podcast, the monthly issues of the HouseMARQUES newsletter, publications by MARQUES Teams and of course posts on the Class 46 and Class 99 blogs for more updates from MARQUES.

Booking is now open for the next MARQUES Meet the Judges event, which takes place in Rome, Italy on Thursday 30 January 2025.

The event will be a roundtable discussion with eminent Italian judges, representatives of the Italian Patent and Trade Mark Office, members of the Italian and EUIPO Boards of Appeal and industry representatives.

It will start with a Buffet Lunch at 12.00 and conclude with a Drinks Reception at 18.30.

Topics covered in the discussion will include: proof of use, protection of well-known trade marks, including heritage brands, showing reputation and acquired distinctiveness through market surveys, patronymic trade marks, how to deal with gaps between market realities and the restrictive examination practices for non-conventional signs as trade marks.

Speakers include: Avv. Vittorio Cerulli Irelli, Avv. Elisa Vittone, Avv. Flavia Tamburrini, Avv. Lorella Cipriani (BOTTEGA VENETA), Avv. Laurence Morel-Chevillet (BULGARI) and Dr. Andrea Chianura (LAVAZZA).

The programme will also offer participants the chance to enjoy a special theatrical performance on “The Trials of Oscar Wilde”, written by Merlin Holland and John O’Connor.This event will be conducted in Italian will be held at the OFF/OFF Theatre, Via Giulia 20, Rome.

Registration is €325 (MARQUES members) or €450 (non-members). For more information, and to reserve your place, please visit the dedicated page on the MARQUES website.