Every year, on 22 April, international Earth Day aims to drive renewed energy, enthusiasm and commitment towards the global environmental movement. Green trademarks are one way for companies to highlight their individual sustainability commitments. But they can be difficult to register. In this guest article, representatives from Rouse’s IP practices in Cambodia, Indonesia, the Philippines, Thailand and Vietnam explore the challenges of registering and using green marks in Southeast Asia.
Navigating the registration and utilisation of green trademarks, which are associated with environmentally friendly products or services, can pose numerous challenges. Not only do different trademark offices have varying approaches to green trademarks, but some offices are inconsistent in the way that they deal with such marks. Brand owners should be aware of these nuances and potential inconsistencies when seeking protection for sustainability-related marks. Here, we explore the approaches taken in Cambodia, Indonesia, the Philippines, Thailand and Vietnam, with advice to brand owners navigating these differences.
The Cambodia Trademark Manual has only one reference to green trademarks; it says that abbreviations (eg, Enviro and Eco) are very common, but they are not inherently capable of distinguishing goods or services in relation to “environmentally friendly” goods or services.
No other regulations, including the Trademark Law, contain details related to green trademarks.
Analysing the Cambodian trademark register reveals the following observations:
Given the limitations and inconsistencies surrounding green marks in Cambodia, it is advisable to seek guidance from a qualified IP attorney who is familiar with the local laws and practices and actively engage with the local IP authorities to advocate for clearer standards that promote and differentiate environmentally friendly products or services. They can provide tailored advice based on the specific circumstances of the green mark.
Another key recommendation for brand owners would be to actively participate in industry associations, which could also be involved in the advocacy of a refinement of local regulations and guidelines.
Having said this, it is unclear whether engaging with the IP authorities to advocate for such change is something that brand owners have the capacity or opportunity to do.
The Indonesian Trademark Law 2016 prohibits the registration of trademarks that may mislead the public regarding the origin, quality, type, size, variety and/or intended use of the goods or services. This means that marks containing terms such as “environmentally friendly” are likely to be rejected, as they may mislead the public about the origin and quality of the products.
However, green trademarks registered before 2016 containing terms such as NATURAL, ORGANIC and ECO FRIENDLY still exist on the register. The trademark office occasionally cites these older registrations to reject similar later applications. While rejections based on misleading the public are uncommon, they indicate that the office is increasingly rejecting green trademarks on such grounds.
In the broader context, the Indonesian Industrial Law 2014 requires industrial companies to use and process natural resources efficiently and in an environmentally friendly and sustainable manner. Violations of this provision can result in administrative sanctions, including:
Additionally, local media started to cover the issue of greenwashing in the early 2020s. For example, a 2023 article alleged that two major companies in the wood and pulp industries, which supply materials to major fashion brands, were involved in greenwashing. These companies had claimed to be eco-friendly but were found to be contributing to deforestation.
Regulations in the trademark and industrial fields, along with media coverage, suggest that sustainability is an increasingly important consideration for both the Indonesian public and brand owners.
Green trademarks which consist solely of descriptive terms cannot be registered as trademarks in the Philippines due to a lack of distinctiveness and the potential to mislead the public. In cases where marks contain green elements, the green terms may be subject to disclaimers.
During the registration process, applicants may be required to submit an affidavit of good faith to address objections that may arise.
According to the trademarks database, marks containing green terms (eg, ECO, GREEN, RE, RENEWABLE and SUSTAINABLE) have been subject to disclaimers. Marks that solely contain the recycling symbol or its variations have been refused registration.
Despite the existing challenges and limitations placed on green trademarks in the Philippines, businesses can promote sustainability through clear branding and messaging, as well as by providing evidence of their eco-friendly practices.
Marks that resemble certification marks or awards – including marks that are green or environmentally friendly – are not registerable in Thailand. However, there have been inconsistencies in the approach taken by the trademark office.
According to the office guidelines, colour names are considered common words and are not registrable as trademarks. Commonly rejected or disclaimed marks are those that traditionally indicate status levels (eg, gold, silver and platinum). The word “green” is mentioned specifically as a non-distinctive word, but there have been cases where marks containing GREEN have been accepted if it refers only to the colour. However, if GREEN is seen as a description of being environmentally friendly, it will be rejected or subject to disclaimers.
The guidelines also explicitly mention “eco” as a common term that is non-distinctive, stating that it is short for “ecological”. This is along the same lines as “pro” (professional), “max” (maximum), and “tec” or “tech” (technology). Marks containing “eco” are often subject to disclaimers or rejected entirely.
There have been cases where marks containing the recycling symbol have been rejected due to its common association with recycling, making it incapable of distinguishing goods and services from those of others, thus lacking distinctiveness. However, marks containing the recycling symbol have also been registered successfully, subject to disclaimers. In more recent cases, marks containing the recycling symbol were registrable without any disclaimers. This suggests inconsistencies in the approach of different examiners.
Overall, the criteria for registrability can vary, particularly when it comes to GREEN, ECO and the recycling symbol. It is important for brand owners to be aware of these nuances and potential inconsistencies when seeking trademark protection for sustainability-related marks.
There are no specific regulations governing green trademarks in Vietnam, but brand owners have the option to register them as either certification marks or ordinary marks.
For certification marks, if a mark has certification proving its green qualification, it can be registered as a green certification mark, subject to disclaimers.
For ordinary marks, trademarks that include certain terms (eg, eco, bio, green, evergreen, sustainable, earth friendly and organic) can be registered but are subject to disclaimers.
Delving deeper into the specifics of green terms, there appear to be inconsistencies in the application of disclaimers to eco-formative marks, in particular those applied for before 2010.
Disclaimers have been imposed on ECO and similar terms (eg, eco green farm, ECO CITY, ECO TEA, ECO GARDENS, ECO SYSTEM and ECO-PRODUCTS). However, before 2010, some of these trademarks (eg, ECO, ECO CIRCLE and ECO-DRIVE) were registered without any disclaimers. Moreover, combined terms (eg, eco tire, Blue Eco and Eco Tiger) do not require disclaimers.
The following is also evident:
Thus, the situation regarding green trademarks in Vietnam appears to be ambiguous and inconsistent. This lack of uniformity may create confusion and may dilute the effectiveness of green trademarks as indicators of environmentally friendly products or services. To enhance sustainability efforts, it would be beneficial to establish clearer guidelines to ensure that green trademarks accurately reflect and promote genuinely eco-friendly offerings.
Green trademarks serve as symbols or labels that businesses use to show their commitment to sustainability and to appeal to environmentally conscious consumers. While restrictions on registering these marks aim to safeguard against misleading or generic use, they can inadvertently restrict businesses from effectively communicating their sustainability efforts. Therefore, it is important for businesses to find alternative ways to convey their commitment to sustainability, such as through clear branding, messaging, and supporting evidence of their environmentally friendly practices.
Achieving a balance between preventing misuse and enabling effective communication is crucial. Consequently, there is a need to further develop regulations to foster the promotion of genuinely eco-friendly offerings across Southeast Asia. This is essential due to the existing variations and inconsistencies in how different jurisdictions handle the treatment of green trademarks.
This article was first published on World Trademark Review in May 2024.
