On 7 May 2024, the Federal Administrative Court ruled in decision B-4934/2023 that the word “Bimbo” was against the Swiss public order and, as such, could not be registered as a trademark insofar as it contravened art. 2 lit. d of the Trademark Law.

While an appeal in front of the Federal Supreme Court is currently pending, the ruling rendered by the Federal Administrative Court serves as a good reminder of the points to be taken into account when art. 2 lit. d of the Trademark Law may come into play:

• The focus should be on the minority mainly affected, then questioning whether their perception is the one of the wider Swiss population.
• The average perception of this minority has to be taken into account, without focusing on extremes with heightened sensitivities.
• The purpose for which the trademark is to be used or how it is to be used on the market does not matter.
• It is sufficient for the sign to appear against public order in one of the Swiss official languages (in this case German, where the term “Bimbo” is offensive to people of dark colour).
• The sign may be considered to be against public order either in absolute terms or with regard to the goods or services in relation to which it is to be registered (concrete examination).
• Borderline cases do not have to be admitted for registration, it being specified that the fact that an addition is less likely to be considered as sufficient to lead to an acceptance of the application than under art. 2 lit. a LPM. In that case, the addition of the acronym “QSR” to the element “Bimbo” does not rule out infringement of art. 2 lit. d LPM.
• The fact that other marks containing the word “Bimbo” have been registered in the past does not necessarily mean that art. 2 lit. d of the Trademarks Act does not apply in this case. This is all the more true than community’s perception of a term can change over time; in this case, the latest registration dates back to 2014, a date since which sensitivities have increased.

In itself, the Federal Administrative Court’s argument is in line with what might be expected. However, the fact that it is likely to call into question the strategy of a trademark holder who has used a term such as “Bimbo”, which was acceptable at one time, then developed different versions of it over the years in the form of serial trademarks, and is suddenly informed that his sign now runs againt public order, is nonetheless problematic. In my view, this is not a desirable outcome. Except in very exceptional cases, the evolution of a trademark over time should not lead to the need to call into question a strategy that has been deemed acceptable and deployed over the years. It remains to be seen what the Federal Court will think.