Distinctiveness vs descriptiveness in the SIZZZLERS trademark dispute

In the competitive world of snack food, a distinctive name for a company’s product is essential to set it apart in a crowded market. This is why companies must ensure that the chosen name does not merely describe the product or its qualities. The notion of descriptiveness in intellectual property is central: if a sign is immediately percieved “…by the relevant public as providing information about the goods and services applied for”, it will be rejected.¹

The issue of descriptiveness was analysed in “Tastees Manufacturing Ltd vs. Kontrollur tal-Propjeta’ Industrijali”, decided by the Court of Appeal (Inferior Jurisdiction) on 26 February 2025, presided by the Honorable Judge Lawrence Mintoff.

Facts of the Case

The case revolved around a trademark application filed by Tastees Manufacturing Ltd (the “Appellant”) for the word “SIZZZLERS”, to cover “potato snacks; potato products and potato foodstuffs prepared in the form of snacks; manufactured or processed potato products for snacks”. By a letter sent by the Comptroller of Industrial Property (the “Comptroller”), the application was refused on the grounds that the proposed mark was considered descriptive and indicated the type, quality or intended purpose of the goods or services covered by the application. The Comptroller informed the Appellant to reconsider the application by amending the proposed mark to include an additional element with the proposed wording, so that it could be reevaluated. The Appellant disagreed with this assessment, arguing that the proposed mark could be registered, because it does not specify the kind, quality or intended purpose of the goods. In a further letter, the Comptroller refuted this argument and informed the Appellant 90 days to amend the application, failing which the mark would be refused.

Arguments by the Appellant

The Appellant appealed from the Comptroller’s decision and requested the Court to revoke it and order the Comptroller to proceed with registration. It argued that the powers and discretions of the Comptroller under the Trademarks Act (Chapter 597 of the Laws of Malta) (the “Act”) with respect to registration were wrongly applied. In the Appellant’s view, nothing in the Act prevents the Comptroller from registering “SIZZZLERS” for potato snacks or potato products prepared in the form of snacks. Thus, there was no need for the Comptroller to invoke the provisions of Article 48(3) of the Act, which enables the Comptroller to refuse an application if the requirements of the Act are not met.

The Appellant further argued that “SIZZZLERS” qualifies as a mark that can distinguish its products from those of competitors, satisfying the definition of a trademark under Article 4(2) of the Act, particularly the fact that it is distinguishable from other goods of other undertakings. It also contended that the mark does not fall within the meaning of Article 5(1)(c) of the Act, which excludes marks consisting exclusively of signs or indications which may serve, in trade to designate the kind, quality or intended purposes of the goods for which registration is sought. According to the Appellant, the word “SIZZZLERS” is a fictitious expression, not one that commonly used in relation to the relevant goods and was therefore capable of distinguishing its goods from those of other undertakings.

The Appellant also claimed that the Comptroller had not properly explained his position. It assumed that the rejection was based on the Comptroller’s belief that “SIZZZLERS” carried the same meaning of the word “sizzle”, rendering it descriptive. The Appellant rejected this, pointing out that “sizzle” can be used both as a noun and verb with different meanings. It also noted that the Comptroller had allowed registrations such as “HOT WINGS” and “MEGA MEAL” and even a similar trademark “SIZZLERS”, used for meat, sausage and poultry products.

Arguments by the Comptroller

The Comptroller rejected the Appellant’s claims of misapplied law. Referring to the Court of Justice of the European Union case Doublemint,² the Comptroller argued that prohibition under Article 5(1)(c) of the Act (mirroring Article 7(1)(c) of the repealed Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, now regulated by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark), is based on public interest. This is because descriptive words or signs linked to a product or service cannot be monopolised by a single economic operator. The Comptroller also pointed out that the European Union Intellectual Property Office had refused to register trademarks containing the morpheme “sizzle” on the same grounds.

Moreover, the Appellant itself admitted in its appeal, that “sizzle” refers to the noise food makes when being fried, showing “sizzler” was a noun analogous to the verb “to sizzle”. This therefore, undermined the claim that “SIZZZLERS” was fictitious or meaningless, as it clearly referred to frying potatoes. Adding an extra “Z” did not make the mark distinctive. As for the Appellant’s reliance on the earlier registration of “SIZZLER” at European level, the Comptroller noted that it covered food products not prepared by frying. Furthermore, the registration had long expired.

Court Analysis

The Court examined the Appellant’s grievance that the law had been incorrectly applied by the Comptroller. It provided that phonetically, “SIZZZLERS” derives from the verb “to sizzle” and that in a culinary context, it has a specific meaning. This is especially the case when considering that the proposed trademark was going to be used for a food product. The Court found that the proposed mark risked leading the average consumer to associate the snack with the method of preparation. The proposed trademark would also negatively impact other businesses from making use of the same word to refer to their food products.

Outcome of the Judgement

The Court held that the proposed trademark described the type of product or one of its qualities, particularly the method used to cook it. As such, it could mislead consumers about qualities the product did not in fact possess. The Court therefore rejected the appeal and confirmed the Comptroller’s decision.

Disclaimer: Ganado Advocates is responsible for contributing to this law report but was not in any way involved as legal advisor for the parties in the judgement being covered in this law report. This article was first published in ‘The Malta Independent’ on 10/09/2025.

¹ EUIPO Guidelines on the Notion of Descriptiveness.

² Case C-191/01 Office for Harmonisation in the Internal Market (Trade Marks and Designs) v Wm Wrigley Jr Company [2003] ECR I-12447.