I read recently of a trade mark case making the mainstream news in Switzerland where an application for the trade mark BIMBO QSR has been refused. (By the way, QSR stands for quick-service restaurant.)

What does the word ‘Bimbo’ mean to you though? As a native English speaker, the definition I’d go for is, “a good looking but intellectually challenged young woman”. Not particularly positive but I don’t think that many would regard it as highly offensive (obviously depending on the context it is said in).

I’ve lived in Switzerland and I’d expect my Swiss friends to have the same definition. English proficiency is high in the country and it would be considered to be a language known by the average consumer.

Nevertheless, English is not an official language of Switzerland. It has four: German, French, Italian and Romansch. For a country with a population similar to that of London, it’s a microcosm of the European Union (with its close to 450 million population) and can be a great test market for potential international brands.

Conversely, as this case demonstrates, this multilingual situation can create complex considerations. While many German-speakers would understand ‘Bimbo’ to have the same meaning as in English, it also has a far more unsavoury meaning in German where it can be a “highly discriminatory insult towards people of colour”.

The Swiss IP Office, and subsequently the Swiss Courts, have therefore confirmed the refusal of the registration on the basis it is against public order.

The fact that the applicant had secured registration of other ‘Bimbo’ registrations in the past was of no consequence with it being recognised that attitudes and sensitivities change over time.

Interestingly, in Italian (another official Swiss language), ‘Bimbo’ is a word for ‘child’. Clearly, this would not be offensive in this context but would potentially indicate the goods and services would be intended for children. They have faced a refusal in the EU² on this basis.

When entering new markets, it is important to conduct searches to ensure you are not going to run into other parties that can stop your use.

It is also vitally important to look at the inherent distinctiveness of a brand and whether it has any meaning in a local language. Are there any negative connotations? These are important features of a search and frame the approach taken to the Register results, or in a worst-case scenario where the mark is locally offensive or negative, could make the Register results inconsequential.

This, of course, really marries up with the commercial attractiveness of a brand and demonstrates the value Trade Mark Attorneys can provide.

Sources

1. SWI swissinfo.ch – Swiss Federal Court Upholds Ban on Mexican Food Brand Bimbo's Trademark
2. Curia – Judgment of the Court (Grand Chamber), 22 September 2016