As global climate change intensifies and extreme weather events become more frequent, environmental awareness has grown significantly worldwide. Consumers’ increasing awareness of sustainability has become a key market trend. Many products now promote eco-friendliness, energy efficiency, and carbon reduction as key selling points, while businesses are integrating green concepts into their product design and brand identities.

This “green wave” is also reflected in trademark registration trends. An increasing number of businesses have begun to include in their trademarks words or imagery associated with concepts of environmental protection, energy conservation, carbon reduction, and “greenness” (collectively termed “green expressions”). According to recent statistics, the number of such applications filed in Taiwan has grown rapidly in recent years, demonstrating the growing importance of environmental and sustainability issues in the market.

Against this backdrop, governments and regulatory authorities around the world have strengthened oversight to ensure that consumers are not misled by false environmental claims, commonly known as greenwashing. Such regulatory efforts are reflected not only in advertising and marketing rules, but also in trademark examination practices.

In a previous article, “Can Businesses Claim Their Products Are Eco-Friendly? – Understanding the Risks of Greenwashing Claims in Advertising,” we discussed the legal restrictions and compliance requirements concerning environmental claims in marketing and advertising in Taiwan.

This article takes a trademark perspective and, in light of the Taiwan Intellectual Property Office’s (TIPO) recently published Guidelines for the Examination of Trademarks Involving Environmental Protection, Energy Saving, Carbon Reduction, ECO and Other Green Expressions (the “Guidelines”), highlights key considerations and practical cases related to trademark applications containing green expressions, and further explores strategies for overcoming refusal grounds to achieve successful registration.

Two Key Considerations in the Examination of Trademarks Containing Green Expressions in Taiwan

When applying for trademarks containing green-related terms or imagery, applicants should pay particular attention to two main issues commonly encountered in practice:

1. Trademarks Likely to Mislead the Public About the Nature, Quality, or Origin of Goods or Services Are Not Registrable 

To avoid situations where the design or wording of a registered trademark does not reflect the true nature of the goods or services and may mislead consumers, Article 30(1)(8) of the Taiwan Trademark Act provides that trademarks that are likely to mislead the public as to the nature, quality, or place of origin of designated goods or services cannot be registered. Even if a trademark is registered, any actual use likely to mislead the public may result in revocation.[1]

For instance, in the case of ECOLUXE 艾蔻斯 & Design , TIPO found that the element “ECO” would likely cause consumers to associate the goods with environmental protection. Because the designated goods, including deodorants and medicated shampoos, did not actually demonstrate reduced environmental impact, the mark was deemed misleading as to the nature or quality of the goods and was therefore refused registration.[2]

Similarly, in the 齡活綠旅遊 (Green Life Travel) case, TIPO determined that the term “綠旅遊 (green travel)” is generally understood as referring to an environmentally friendly type of travel. Since the applicant’s designated services had not been certified under the Green Travel Seal (GTS) or any equivalent eco-label, the mark was likely to mislead consumers about the nature or quality of the services. The application was thus refused pursuant to Article 30(1)(8).

2. Trademarks Lacking Distinctiveness Are Not Registrable

Many trademarks containing green words or imagery are considered descriptive[3] rather than distinctive, meaning they merely describe product characteristics and fail to identify the source of the goods or services. Therefore, such marks are not registrable under the Trademark Act.

In the 淨零地球 & Design (“Net Zero Earth”) case, TIPO held that the term “淨零 (Net Zero)” refers to the balance between anthropogenic greenhouse gas emissions and removals. Because the mark merely consisted of the descriptive slogan “淨零地球 (Net Zero Earth)” and an illustrative image of the planet, it was deemed non-distinctive and therefore refused registration.[4]

Likewise, in the ECO Life’s good, when it’s green case, TIPO found that the word “ECO” conveys ideas of ecology and environmental protection, which is widely used in modern society. The phrase “Life’s good, when it’s green” was viewed merely as an advertising slogan. Taken as a whole, the mark was deemed non-distinctive and thus unregistrable.[5]

Strategies to Overcome Refusal Grounds

When the TIPO issues an office action citing potential refusal grounds, applicants may respond with various strategies to overcome such objections.

1. Addressing Misleading or Misrepresentative Elements

According to the Guidelines, applicants have three primary ways to overcome refusals under Article 30(1)(8).

a. Submitting Supporting Evidence or Explanations

Applicants may provide evidence showing that the words or images in the mark accurately reflect the nature or characteristics of the designated goods or services, and thus are not misleading.

For example, if the mark includes the term “Green Building Materials,” the applicant may submit proof of certification from the Ministry of the Interior under the Green Building Material Label program, and limit the scope of designated goods to those meeting relevant certification standards.[6]

Similarly, if the mark includes expressions such as “environmentally friendly” or “energy-saving,” applicants may submit certification documents issued by authorities such as the Ministry of Economic Affairs or the Ministry of Environment to substantiate the environmental claims.

In the 永設計字 永續 sustainable & Design case, TIPO initially expressed concern that the inclusion of “永續” (“sustainable”) might mislead consumers if the services were not genuinely related to sustainability. The applicant, Taiwan Leisure Farms Development Association, provided evidence that its services involved assisting domestic farms in obtaining “Special Agro- Tourism Spots Certification,[7]” a sustainability-oriented initiative,[8] and added the limiting phrase “all the above services are related to sustainability” to the specification. TIPO accepted these explanations and granted registration.[9]

b. Deleting Potentially Misleading Terms

In addition to terms such as “環保 (environmentally friendly),” “綠色 (green),” “ 減碳 (low-carbon),” and “節能 (energy-saving),” the Guidelines classify broader terms like “永續 (sustainability),” “淨零 (net zero),” “環境溫和 (gentle for the environment),” “可行生物分解 (biodegradable),” “碳友善 (carbon-friendly),” and “ESG” as green expressions.[10] If a mark contains such terms and is refused for being misleading, applicants may consider deleting these specific expressions from the mark.

c. Narrowing or Limiting the Designated Goods or Services

If deletion is undesirable, applicants may instead narrow the specification to include only goods or services genuinely consistent with the environmental message. For instance, a mark containing the term “green energy” may be refused if used broadly for “electric power generation” services. However, if the specification is amended to “wind power generation,” “renewable energy production,” or “solar power generation,” the misleading concern may be resolved. [11]

2. Addressing Lack of Distinctiveness

To avoid refusal on the ground of non-distinctiveness, applicants may enhance distinctiveness through creative or suggestive design elements. Alternatively, they may disclaim any exclusive rights to the non-distinctive element of the mark.

For example, in the GREEN MADE & Design case, TIPO initially refused registration, finding that “GREEN MADE” merely described the characteristic of goods being “eco-friendly.” After the applicant agreed to disclaim exclusive rights to the words “GREEN MADE,” TIPO approved the mark for registration.[12]

Conclusion and Future Outlook

In summary, when applying for trademarks containing green terms or imagery, applicants must pay close attention to potential issues of misleading the public and lack of distinctiveness. Following the issuance of the Guidelines, how these two refusal grounds will be applied in practice remains to be seen.

It is also worth noting that even if a mark containing green expressions is approved for registration, TIPO will include a specific reminder in the registration decision stating that if the mark is later used in a way that misleads the public, the registration may be revoked.

Therefore, businesses planning to use environmentally themed words or images should exercise caution not only during the application process but also in subsequent marketing activities to avoid the risks of being accused of greenwashing, having their trademark registrations revoked, or facing potential liability under the Fair Trade Act and other related laws.

For more information on trademark and other IP matters in Taiwan, please contact us at pdernbach@winklerpartners.com or sho@winklerpartners.com.

[1] See Article 63(1)(5) of the Taiwan Trademark Act.

[2] See Taiwan Intellectual Property Office Refusal Decision No. (114)-Zhi-Shang-21008-11480561850.

[3] See Article 29(1)(1) of the Taiwan Trademark Act.

[4] See Taiwan Intellectual Property Office Refusal Decision No. (114)-Zhi-Shang-00310-11480047530.

[5] See Taiwan Intellectual Property Office Refusal Decision No. 10080082950.

[6] See Taiwan Intellectual Property Office, Guidelines for the Examination of Trademarks Involving Environmental Protection, Energy Saving, Carbon Reduction, ECO, and Other Green Expressions, at 17.

[7] See Guidelines for Certification of Featured Agro-Tourism Sites (https://www.taiwanfarm.org.tw/zh-TW/Front/SAS/Detail?funcode=FeaturedCertification_Guide).

[8] See Taiwan Leisure Farms Development Association, official website (https://www.taiwanfarm.org.tw/zh-TW/Front/Association/Detail?funcode=Introduce).

[9] See Taiwan Intellectual Property Office, Trademark No. 02473433.

[10] See supra note 6, at 11.

[11] See supra note 6, at 13–14.

[12] See Taiwan Intellectual Property Office Preliminary Refusal Notification No. (109)-Hsueh-Shang-20841-10991018020.