Trademark Distinctiveness in Malta: Lessons from the Sizzlers Case

The recent Sizzlers judgment marks a pivotal moment in Maltese trademark jurisprudence, particularly in the assessment of descriptive marks within the food and consumer goods sector. As businesses increasingly adopt creative or sensorydriven branding, the case underscores the limits of registrability when a sign directly evokes product characteristics. This publication examines the Court of Appeal’s reasoning and highlights the strategic lessons for brand owners navigating trademark protection in Malta and the EU.

The case arose from an application filed by Tastees Manufacturing Ltd to register the word mark “SIZZZLERS” in relation to potato-based snack products. The Comptroller of Industrial Property refused the application, concluding that the mark was descriptive and therefore incapable of distinguishing the applicant’s goods from those of other traders.

Tastees Manufacturing appealed the refusal, arguing that the mark was inherently distinctive and did not directly describe the nature, quality, or purpose of the goods. The appeal required the Court to consider where the line is drawn between descriptive indications and registrable trademarks under Maltese law.

Under the Trademarks Act (Chapter 597 of the Laws of Malta), a trademark must be capable of distinguishing the goods or services of one undertaking from those of others. The Act excludes from registration signs which consist exclusively of indications that may serve, in trade, to designate characteristics such as the kind, quality, or intended purpose of the goods.

These provisions reflect the principles embedded in EU trademark law, including Regulation (EU) 2017/1001 on the EU trade mark. Maltese courts have consistently interpreted domestic trademark law in harmony with EU jurisprudence, particularly in matters concerning distinctiveness and descriptiveness.

In the appeal, Tastees Manufacturing argued:

• The term SIZZZLERS  did not convey descriptive information about the nature, quality, or purpose of the goods.  
• The spelling and presentation of the mark gave it an inherently distinctive character
• The Comptroller had incorrectly conflated descriptive association with lack of distinctiveness

On the other hand, the Comptroller maintained:

• EU case law such as Doublemint, confirms that terms conveying immediate information about the product cannot function as trademarks.  
• The term conveyed an impression of how the snack tastes when consumed
• The relevant public would immediately associate the mark with a sensory quality of the product  

The Court evaluated the mark “SIZZZLERS” against the conceptual boundary between distinctiveness and descriptiveness:

Perception by the Relevant Public

The Court reaffirmed that descriptiveness must be assessed from the perspective of the average consumer, taking into account linguistic familiarity and market context. The decisive question was whether the sign would be understood immediately and without reflection as describing a characteristic of the goods.

Comptroller’s Discretion

While acknowledging the Comptroller’s discretionary powers, the Court emphasised that these must be exercised in accordance with statutory criteria. In this case, the refusal was grounded in a proper assessment of consumer perception rather than subjective branding considerations.  

Comparative Jurisprudence

The judgment explicitly referenced EU trademark jurisprudence acknowledging that marks which fail to differentiate goods due to their descriptive nature must be refused to protect fair competition and consumer clarity.

The Court ultimately upheld the refusal, affirming that “SIZZZLERS” would be perceived as describing the qualities or characteristics of potato-based snack products, and thereby lacked the requisite distinctive character.

The Sizzlers judgment carries practical, and in some cases uncomfortable, lessons for businesses seeking to protect brands in Malta and across the EU. While the decision is legally orthodox, its commercial consequences are significant — particularly for food, beverage, and consumer-facing brands.

Sensory Branding Remains High Risk

The decision confirms that sensory or evocative branding – even when creatively spelled or exaggerated – remains vulnerable where it directly describes product characteristics. Catchiness does not equate to registrability.

Marketing-Led Brands Face Structural Weakness

Brands built around descriptive messaging enjoy reduced exclusivity. Without trademark protection, competitors remain free to use similar language, weakening enforcement options and long-term brand value.

Timing of Trademark Strategy Is Critical

The case highlights the importance of pre-launch trademark assessment. Once a brand is embedded in packaging and marketing, refusal of registration can leave businesses commercially exposed.

Acquired Distinctiveness Is Not a Shortcut

While the law permits registration through acquired distinctiveness, the evidential burden is substantial. This route is rarely viable for early-stage or SME brands and should be treated as exceptional rather than strategic.

Portfolio Thinking Is Essential

Where word marks face risk, businesses should consider layered protection strategies, including distinctive logos, device marks, and broader brand architecture that can support enforceability.

Our Intellectual Property team advises businesses on trademark strategy, registrability assessments, and contentious proceedings before the Comptroller and appellate courts. We assist clients in aligning branding ambitions with legal defensibility, conducting risk reviews prior to market entry, and developing trademark portfolios that withstand regulatory and judicial scrutiny under Maltese and EU law.