Green trademarks in China and Hong Kong

"Green trademarks" or "green marks" denote trademarks which communicate messages about the environmental impacts or credentials of a business’ products, services or activities. They can include marks containing broad terms such as ‘organic’ / ‘有机’ (yǒujī, organic in Chinese), "green" "绿色" (lǜsè, green in Chinese), "eco", "enviro", "环保" (huánbǎo, environmentally friendly in Chinese), "sustainable" / ‘可持续’ (kěchíxù, sustainable in Chinese) or more specific terms such as ‘zero waste’ or ‘carbon neutral’. They can also potentially include marks with certain visual elements, such as plant or leaf symbols or even just the colour green.

Given the increase in concern for environmental protection worldwide, businesses are increasingly interested in touting their environmental credentials to consumers, including by using and applying to register green marks. Here, we look at some of the rules of trademark law applicable to green marks in China and Hong Kong.

China

In China, the Trademark Law (amended in 2019) and Implementing Regulations do not have provisions specifically addressing green marks. Nonetheless, the general provisions may apply.

It is possible that an application to register a green mark may be refused on absolute grounds, in particular on grounds that the applied-for mark is:

• devoid of distinctive character;
• merely descriptive of the designated goods or services; and/or
• deceptive and may easily mislead the public regarding the quality or origin of goods. Here, the trademark examination guidelines issued by the China National Intellectual Property Administration (CNIPA) give an example of the use of "healthy" in respect of cigarettes (not green-related, but still helpful as guidance).

Where a mark has been refused on these grounds, it is possible to file an appeal and submit written arguments and evidence. However, it is generally difficult to persuade the CNIPA to overturn a trademark refusal on these grounds.

In the case of a mark which is deceptive and may easily mislead the public regarding the quality or origin of goods, not only is registration prohibited, but so is use of the mark. If such a mark is used in the Chinese market, it may attract intervention and penalties from China’s administrative authorities, including the Administration for Market Regulation.

The draft amendments to China’s Trademark Law proposed in early 2023 do not change any of these provisions. However, a newly added provision in the draft may be relevant: article 9, which sets out a general obligation for trademark applicants and users to act in good faith, specifically prohibits a mark owner from using a mark in a manner which harms the national or public interest. In theory and depending on the circumstances, China’s trademark authorities may determine that misuse of a green mark falls into this situation, and that use of such mark should be prohibited.

In 2017, the Beijing IP Court upheld the CNIPA’s invalidation of the mark “绿色庄园有机” (Lǜsè Zhuāngyuán Yǒujī, Green Manor Organic in Chinese), designated in respect of “wine; fruit wine (alcoholic)” in Class 33. The court decided that the mark contained ‘exaggerated advertising and deceptiveness’, noting that the use of the term ‘organic’ in respect of the designated goods was regulated and required certification under Chinese law. While the court’s decision was based on a previous version of the Trademark Law, it is possible that a similar decision might be reached under the provisions of the current version.

Hong Kong

Similar to China, Hong Kong’s Trade Marks Ordinance Cap 559 and Trade Marks Rules Cap 559A have no provisions specifically addressing green marks. Similar to China, the general provisions may nonetheless apply.

It is possible that an application to register a green mark may be refused by the Hong Kong Trademarks Registry (HKTMR) on absolute grounds, in particular on grounds that the applied-for mark is:

• devoid of distinctive character;
• descriptive of the designated goods or services; and/or
• likely to deceive the public. Here, the work manual of the HKTMR gives the example of “suggestions of environmental friendliness, provided that this quality is relevant to the goods or services concerned”.

Where a mark has been provisionally refused on these grounds, it is possible to submit written arguments and evidence to overturn the objections. While the HKTMR is relatively more likely to accept substantive arguments than the CNIPA, success is still by no means guaranteed.

Green-related certification marks

The trademark law of both China and Hong Kong provide for certification marks, which provide certification that the goods or services bearing the mark meet certain standards or criteria. Such marks are normally supervised and managed by trade associations, government departments, technical institutes or similar bodies who set the qualifications which must be met before the mark can be used by an entity in the market. Sometimes, such marks are registered in the same manner as other trademarks.

In both China and Hong Kong, like in other jurisdictions, there are established certification marks for green and environment-related products and services. For example, China has the China Green Product regime (中国绿色产品认证制度) and Hong Kong has the Hong Kong Green Label Scheme (香港環保標籤計劃)).

"Green claims" and "greenwashing"

In both China and Hong Kong, government authorities are increasingly scrutinizing ‘green claims’ (denoting public claims made by businesses regarding the environmental credentials of their products, services and activities) and ‘greenwashing’ (denoting where businesses mislead the public regarding the same). Some of this scrutiny is coming out of existing regulatory regimes, including those regarding competition, consumer protection, product safety, advertising and even banking and financial services.

The use of green marks in China and Hong Kong may fall into one or more of these regulatory schemes. For example:

• in China, the Administration for Market Regulation has jurisdiction to take action against entities in the market violating China’s advertising and anti-unfair competition laws, which prohibit false advertising and promotion; and
• in Hong Kong, the Customs and Excise Department handles enforcement of the Trade Descriptions Ordinance Cap 362, including taking action against false trade descriptions, false, misleading or incomplete information and misstatements in respect of goods provided in the course of trade.

The consequences of regulatory violations vary widely, but can potentially include financial penalties and/or having to remove certain goods, services or advertisements from the market.

Practical questions to consider

Brand owners wishing to showcase their environmental credentials through the use of green marks on their goods and services should consider:

• Could the use of the green mark in respect of the relevant goods or services be considered misleading or deceptive to consumers? If so, it may be preferable to amend the mark, to limit use of the mark to specific goods and/or services, or simply to forgo use of the mark altogether.
• Is use of the mark on the relevant goods and/or services distinctive? If not, before filing to register such mark, consider amending the mark to include other more distinctive elements, or limiting the specification to only those goods/services on which use of the mark would be distinctive.
• Is there one or more green-related certification marks which could be used on the relevant goods or services? If so, consider applying to use such marks, but only if the applicable criteria can be met.
• Could the use of the green mark attract regulation from other regulatory regimes, such as advertising or consumer protection law? Could use of the mark constitute a green claim or greenwashing? Legal advice may be necessary to reduce the risk of penalties.
• Could the logo or the design, such as the plant or leaf symbol, be protected by copyright registration (as an alternative to trademark registration) in China? A copyright registration is generally useful in trademark proceedings against pirate trademark applications as well as enforcement actions against third parties who use imitative labels in China.