Green trademarks have become the latest trend in an increasingly environmentally conscious business environment. But this good news is tempered by a growing potential for trademark ownership conflicts such as the judicial row over the GreenDot trademark.

A Brooklyn-based moving company named Movers Not Shakers recently received a trademark for the term “GothamBoxes.” Instead of cardboard boxers, the firm distributes reusable plastic crates (dubbed GothamBoxes) to clients, which it will drop off one week prior to a client’s move and then pick up again one week afterwards. The crates are designed to hold the equivalent of one hundred cardboard boxes. This is just one way Movers Not Shakers is committed to sustainability – it also donates $200 each month to the Prospect Park Alliance in order to help offset its carbon footprint and converted its fleet of moving trucks to bio-diesel over the summer.

Meanwhile, the U.S. Patent & Trademark Office has granted a trademark for the term "Green Branch®" to The PNC Financial Services Group, Inc. A nationally recognized leader in environmental sustainability, the firm has more buildings (42) certified by the U.S. Green Building Council (USGBC) than any other company – regardless of industry. "The trademark is affirmation of PNC's leadership in 'green' business practices during the past decade," said Gary Saulson, director, corporate real estate, PNC. "Our commitment to significantly reduce our impact on the environment has enabled us to lower costs, increase efficiency and productivity as well as enhance the communities where our customers and employees live, work and play."

But as green trademarks proliferate the market and more firms recognize the many advantages that sustainable business practices afford them, are they also opening the floodgates to trademark infringement litigations? One hopes that the current Green Dot brouhaha is not a harbinger of things to come.

Here’s a little background. According to a German Packaging Ordinance, trade and industry have to collect, separate and take back their packaging materials – especially those brought by consumers into their households – in order to reuse or recycle them. Thus, the “DSD – Duales System Deutschland GmbH” (Dual System Germany Ltd.) – was founded to organize the process. DSD’s activities cover all packaging marked with a “Green Dot” – Der grüne Punkt. To be able to use the “Green Dot” trademark on their products’ packaging, companies have to pay fees that are related to the kind and volume of packaging waste. In return, they are guaranteed that all packaging marked with a “Green Dot” will be collected and processed. The exclusive rights to the “Green Dot” trademark therefore belong to DSD. For consumers the “Green Dot” shows that the packaging fulfils specific criteria and will be taken back, separated and reused or recycled.

The Green Dot – a registered trademark of Der Grune Punkt of Duales System Deutschland AG (Cologne) and PRO-Europe s.p.r.l. (Brussels) – is protected in more than 170 countries. It is NOT a recycling symbol but a symbol in Europe of financial contribution to a national packaging recovery company established in accordance with the European Packaging Directive for packaging waste and national law.

Green Dot infringement?

Recently, DSD and GreenPak, holders of the rights to make use of the trademark in Malta, filed two separate judicial protests against Green.MT Ltd., a non-profit, waste management organization set up by the Malta Chamber of Small and Medium Enterprises (GRTU).

In their judicial protests, filed in the First Hall of the Civil Court, DSD and GreenPak, claimed that the Green.MT used a similar trademark that could easily be confused with the Green Dot.They added that Green.MT was using the trademark illegally and that Green Dot had invested greatly in building its reputation. The companies are calling on Green.MT to pay for damages and holding the organization responsible if they continue using the trademark and distributing any material carrying it.

In response, Green.MT Ltd. filed a counter protest denying that it had breached trademark laws. The company said the dot in its name was a clear reference to its website address and the punctuation was not emphasized in its name. It further claimed that it was registered by the Malta Financial Services Authority and held a registered trademark issued by the Commerce Division, which omitted the dot, as punctuation cannot be included in a trademark. Furthermore, Maltese law states that no trademark breaching trademark laws could be registered. Green.MT also added that the word “green” was often associated with environmentally-friendly initiatives such as recycling.

Though the case still has to be resolved, this intersection between green industry and intellectual property has the potential to open new vistas in IP law.