Descriptiveness and Genericness in Malta Under Article 5(1)(c) and 5(1)(d)

Descriptive and generic signs are among the most common reasons trademark applications fail in Malta. For businesses, the issue is commercially significant because a brand that merely tells consumers what the goods are, what they do, where they come from, or what they are made of will usually not function as a protectable indicator of origin. Malta’s Trademarks Act Chapter 597 follows EU doctrine closely: signs that are descriptive, customary, or devoid of distinctive character are not registrable unless the applicant can prove acquired distinctiveness through use in Malta. The analysis applies not only to plain word marks but also to logo and combined marks where the wording remains the dominant element.

The Legal Framework: Article 5(1)(b), 5(1)(c), 5(1)(d) and Article 5(8)

• Article 5(1)(b): bars registration of trademarks devoid of any distinctive character.
• Article 5(1)(c): bars signs consisting exclusively of indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services.
• Article 5(1)(d): bars signs consisting exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade.
• Article 48: authorizes the Comptroller of Industrial Property to examine the application and object where the statutory requirements are not met.
• Article 48(6): permits disclaimers of specified elements where appropriate.
• Article 5(8): allows registration of a sign caught by Article 5(1)(b), 5(1)(c), or 5(1)(d) if, before the filing date, it had acquired distinctive character as a result of use made of it in Malta.

The Descriptiveness and Genericness Test

The legal question is whether the relevant public would perceive the sign primarily as a badge of commercial origin or as information about the goods or services. Under Article 5(1)(c), the focus is on whether the sign designates a characteristic. Under Article 5(1)(d), the focus is on whether the sign is customary or generic in language or trade practice. Article 5(1)(b) operates as the broader distinctiveness backstop.

In practical terms, a sign is descriptive if it directly or sufficiently immediately conveys information about the goods or services. Examples include wording that names the product, describes quality, indicates intended purpose, or states geographic origin. A sign is generic or customary if it is the ordinary name of the goods or services themselves, or if trade practice has normalized it to such an extent that consumers would not treat it as a source identifier.

The office will assess the sign in relation to the specific goods and services claimed. The same word can be registrable for one category and unregistrable for another. An arbitrary term for software may be descriptive for tourism services. This goods-specific approach is central to Maltese and EU trademark law.

For genericness, the bar is even higher than for descriptiveness. A generic term is effectively outside the trademark system because all traders need to use it. While a descriptive sign may in some cases become registrable through acquired distinctiveness under Article 5(8), the guide indicates that in Maltese practice a truly generic term is treated as occupying the furthest non-distinctive end of the spectrum and is functionally very difficult to rescue except where it appears only as a disclaimed, secondary component of a distinctive composite mark.

The Comptroller of Industrial Property applies this test from the perspective of the average consumer in Malta. Because Malta is bilingual in practice, and consumers regularly encounter both Maltese and English, the office does not limit itself to the literal language of filing. If a term is descriptive in English, descriptive in Maltese, or commonly understood from another language by the Maltese public, the office may object. Transliteration of non-Latin script and translation of foreign words may therefore become relevant in examination.

What the Comptroller of Industrial Property Considers Descriptive or Generic

Examiner behavior in Malta is described in the guide as generally strict. Several patterns emerge consistently.

Directly descriptive terms

• Kind or nature: words naming the goods themselves, such as a product name for that same product category.
• Quality: signs describing features such as sweet, fast, organic, premium, or light, where the term operates informationally rather than distinctively.
• Intended purpose: wording explaining what the goods are for, such as terms indicating repair, cleaning, travel, or storage functions.
• Geographic origin: place names that immediately describe origin or service destination.

Customary and generic terms

Article 5(1)(d) captures words that have become customary in common language or trade practice. This includes ordinary product names and standard trade descriptors. If competitors would naturally need to use the same term in the ordinary course of trade, refusal risk is high or critical.

Stylization and logos

Stylization does not automatically solve a descriptiveness problem. If the verbal element remains legible and dominant, the office is likely to treat the application as still centered on the descriptive wording. A decorative script, simple color treatment, or common graphic accompaniment normally does not transform the sign into a source identifier. This is especially true for combined marks where the word portion is what consumers will remember and use verbally.

Stylization may help only where the graphic treatment is sufficiently striking that the overall sign no longer consists exclusively of descriptive material. Even then, the office may insist that the registrable scope lies in the composite presentation rather than in the descriptive words themselves. A disclaimer under Article 48(6) may be appropriate.

Foreign-language terms

If a term in Italian, French, or another language will be understood by Maltese consumers as descriptive, the office may object. The legal analysis is consumer-perception based, not dictionary-formalistic. Likewise, a non-Latin mark may be transliterated and assessed for meaning.

Dominant element in combined marks

For combined marks, the dominant element doctrine is central. If the word portion is descriptive and visually prominent, the application remains vulnerable even if a logo is present. Conversely, if the device is the dominant and distinctive feature, and the descriptive wording is minor, the office may be more receptive to registration with an appropriate disclaimer. But applicants should not assume that merely adding a symbol, line, border, or ordinary pictorial reference will neutralize a word-based objection.

Key Case Law

The source guide states that Maltese case law on descriptiveness and genericness is limited and that no leading cases have been published on pure descriptiveness in Malta. The guide notes that Maltese examiners rely heavily on EU case law principles by analogy, but for Malta-specific citation purposes, no leading published national appellate cases are identified in the source material.

Because Chapter 597 transposes EU trademark standards, practitioners should expect Maltese reasoning to reflect established EU doctrine on directness of descriptive meaning, consumer perception, and the public interest in keeping descriptive language free for all traders.

The Procedure for Responding to a Descriptiveness or Genericness Refusal

An applicant receiving an Article 5(1)(b), 5(1)(c), or 5(1)(d) objection should proceed in a structured way.

Step 1: Review the goods and services precisely

Descriptiveness is assessed in relation to the claimed goods and services. Sometimes a term is objectionable only because the specification is too broad. Narrowing the specification may reduce or eliminate the objection.

Step 2: Assess whether the office has overread the meaning

The applicant may argue that the term is suggestive rather than descriptive, that it is unusual or fanciful in context, or that the relevant public would not immediately understand the claimed meaning.

Step 3: Consider whether the mark is a composite with a distinctive overall impression

If the mark is combined, argue the totality of the presentation. But this should be done realistically. If the word remains dominant, the argument will be weak.

Step 4: Offer a disclaimer if appropriate

Under Article 48(6), a non-distinctive verbal element may be disclaimed where the rest of the mark is capable of registration. A disclaimer does not convert a generic word into a protectable feature, but it can facilitate registration of the distinctive composite.

Step 5: File evidence of acquired distinctiveness under Article 5(8)

This is the principal cure for descriptiveness. Evidence may include length and intensity of use in Malta, turnover, advertising expenditure, local market share, press coverage, distributor evidence, and consumer recognition materials. The evidence must show that, by the filing date, the relevant public in Malta had come to perceive the sign as indicating a single commercial source.

Step 6: Amend only within Article 49(2)

Do not alter the identity of the mark. If the sign needs a complete redesign to become distinctive, a fresh filing is usually safer than trying to stretch amendment rules.

Step 7: Appeal if the refusal rests on an incorrect legal standard

If the Comptroller rejects the application despite substantial evidence or a strong argument that the mark is suggestive or has acquired distinctiveness, an appeal may be considered.

Strategic Recommendations

• Recommendation: Choose marks that do not describe product characteristics. Coined and arbitrary marks are materially easier to register and enforce.
• Recommendation: Conduct a bilingual meaning review before filing. A term that seems distinctive in one language may be descriptive in English, Maltese, or a commonly understood foreign language.
• Recommendation: For combined marks, evaluate whether the device truly changes the overall impression. Cosmetic stylization rarely defeats an Article 5(1)(c) objection.
• Recommendation: Preserve evidence of use in Malta from the first day of marketing. If acquired distinctiveness later becomes necessary, contemporaneous documents are more persuasive than retrospective assertions.
• Recommendation: Use disclaimers strategically, not as a substitute for a weak brand. A disclaimed generic term provides little practical enforcement value.
• Recommendation: Narrow the specification where justified. Overclaiming goods or services can make a marginally acceptable sign appear descriptive across the whole application.

Common Mistakes

• Mistake: Assuming that a descriptive term becomes registrable merely because it is displayed in a nice font. Ordinary stylization usually does not change the legal analysis.
• Mistake: Ignoring the meaning of a foreign-language word. If Maltese consumers understand it, the office may still object.
• Mistake: Treating combined marks as automatically safer than word marks. If the dominant element is descriptive, the combined mark remains vulnerable.
• Mistake: Filing a generic product name with the expectation of broad exclusivity. Generic terms cannot perform a trademark function for the goods themselves.
• Mistake: Waiting until after refusal to gather evidence of acquired distinctiveness. Evidence should ideally be organized before filing or at least before the first substantive response.

Key takeaway: Under Article 5(1)(c) and Article 5(1)(d), Malta refuses marks that inform rather than distinguish. If the wording describes the goods, names them, or has become customary in trade, the safest path is to adopt a stronger brand or be prepared to prove acquired distinctiveness in Malta under Article 5(8).