The case: Brands with high sustainability credentials are particularly suited to promotion via marketing, which can act to distinguish the product at the same time as offering a positive statement about it. However, for sustainability brands to be protectable, they have to be well executed. A well-known shirt manufacturer has recently had to learn this:
This was the advertising slogan used by the shirt manufacturer OLYMP to promote its new collection of particularly ecological shirts. And to secure a monopoly on the label, the company applied to register GREEN CHOICE as a Union Trade Mark:
They assumed they had a good chance of protecting the label. The special arrangement of the word elements GREEN and CHOICE was eye-catching, while the green background and the word CHOICE would imply an environmentally friendly choice, without having to refer to the colour green itself (i.e. of the shirts), which would not be protectable. The fact that the shirts are also environmentally friendly is only indirectly and covertly conveyed. The label expressed this message in an imaginative way.
Unsurprisingly, the European Trade Mark Office refused registration. The reason for this was that the (sole) message a buyer would get from the trade mark, would be that the shirts marked with it were special ecological products and that an environmentally friendly choice was being made via the purchase. The mark was not suitable for distinguishing Olymp’s shirts from those of other shirt manufacturers.
Why is this decision correct?
Advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks can in principle be monopolised as trade marks. For this purpose, however, they must not be perceived exclusively as advertising messages. They must also, at least, be regarded as a means of identifying/associating the origin of the marked goods with a particular business. Therefore, a certain originality or conciseness is necessary for their protection. The understanding of the signs should either require a minimum of interpretation or trigger a thought process on the part of a buyer. Such originality may then indicate the origin of the product as coming from a particular business operation, even if it is at the same time being advertised as something special.
However, all this was missing from the GREEN CHOICE label. The word GREEN is readily understood by the buyers of the shirts as a synonym for ecological and environmentally friendly. And CHOICE is understood by English-speaking buyers of the shirts simply in the sense of choice. Placed on the shirts or used in advertising for shirts, the combination of these words therefore only means that sustainable products are available to be chosen and that one is thus environmentally conscious oneself. This understanding is even reinforced by the fact that the word GREEN is given special prominence in the logo – hence the associated sustainability message comes to the fore. As a result, the buyers see the words GREEN CHOICE merely as an immediately comprehensible advertising slogan. Nor was the slogan able to achieve distinction through the image and the graphic elements of the logo, because these were too unoriginal, too insignificant and customary in advertising.
Decision of the Fifth Board of Appeal of EUIPO of 31 January 2022 (case R-954/20215-5).
Learnings: Avoid costly brand developments that cannot, ultimately, succeed. If you want to develop brands that suggest a certain message or claim, use original elements in these signs. This was the case with AUDI’s slogan VORSPRUNG DURCH TECHNIK (advantage through technology). The laudatory factual statement was not obvious in this slogan. Even the term ‘technology’ was unclear and thus neutral in terms of value. Moreover, the term alone could not explain an advantage.
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