„Black forest” not for clothes – a geographical indication blocks the way to trademark registration
Black forest (Polish “czarny las”, German “Schwarzwald”) as a trademark destined among others for the marking of clothing and footwear, seems to be a catchy and original sign, and most importantly – it seems to fulfill the requirements necessary for trademark registration. However, upon making the choice of one’s trademark, one also has to take into consideration the fact whether it does not correspond to a geographical indication, which may be cited as an obstacle to registration.
A collision with geographical indication
This is exactly what happened with the European Union trademark registration “black forest” destined for “clothing, footwear, headgear, footwear for recreation and sport, clothing for recreation and sport” in class 25.
The decision of the Chamber of Appeals of the European Union Intellectual Property Office (EUIPO) as of 8th April 2020 upheld the earlier decision of the EUIPO on cancellation of the trademark “black forest” in respect of goods from class 25.
The decision has been based upon Art. 7 pt. 1 letter c) of the Regulation on the Trademark of the European Union, according to which:
“Trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, shall not be registered.”