Descriptive Descriptive WordWord Mark Mark- Examination Procedure -- Examination Procedure -

Industrial Property Registrations Industrial Property Registrations - Malta -- Malta -

Gina BorgGina BorgTrademark ExaminerTrademark Examiner

Descriptive Descriptive WordWord Mark Mark

The example we are going to use is:The example we are going to use is:

Kitchen Wooden TablesKitchen Wooden Tables

Word mark Word mark

applied for in Classification 20applied for in Classification 20

Descriptive Descriptive WordWord Mark Mark

When the mark When the mark

Kitchen Wooden TablesKitchen Wooden Tables

is being examined on Absolute Grounds,is being examined on Absolute Grounds,

it is found to be descripitive in terms of it is found to be descripitive in terms of

Article 4(1)(c) of the Trademarks Act 2000.Article 4(1)(c) of the Trademarks Act 2000.

Descriptive Descriptive WordWord Mark Mark

Art 4. Art 4. (1)((1)(cc)) of of The Trademarks Act 2000 The Trademarks Act 2000

states:states:

The following shall not be registered as The following shall not be registered as

trademarks:trademarks:

Descriptive Descriptive WordWord Mark Mark

... ... trademarks which consist exclusively of trademarks which consist exclusively of

signs or indications which may serve, in signs or indications which may serve, in

trade, to designate the kind, quality, trade, to designate the kind, quality,

intended purpose, value, geographical intended purpose, value, geographical

origin, the time of production of goods or of origin, the time of production of goods or of

rendering of services, or other rendering of services, or other

characteristics of goods or servicescharacteristics of goods or services ... ...

Descriptive Descriptive WordWord Mark Mark

trademarks which consist trademarks which consist exclusivelyexclusively of of

signs or indications which may serve, in signs or indications which may serve, in

trade, to designatetrade, to designate::

the the kind kind ... ... (wooden)(wooden),,

intended purposeintended purpose ... ... (kitchen tables)(kitchen tables), ,

Descriptive Descriptive WordWord Mark Mark

A communication is sent to the applicant:A communication is sent to the applicant:

a.a. Explaining that the mark cannot be Explaining that the mark cannot be

registered in terms of Art. 4(1)(c) of the registered in terms of Art. 4(1)(c) of the

Trademarks Act 2000, and thus would be Trademarks Act 2000, and thus would be

refused;refused;

Descriptive Descriptive WordWord Mark Mark

b. However should s/he wish, they may

amend the mark by:

i. changing the words to a distinctive

format, or

Descriptive Descriptive WordWord Mark Mark

ii. adding a registerable element to the mark

applied for, which could be a non-

descriptive word or a distinctive element

or feature.

This amendment must be effected within

90 working days.

Descriptive Descriptive WordWord Mark Mark

It should be noted that the Trademark Act It should be noted that the Trademark Act

2000, Article 13 (2) states that:2000, Article 13 (2) states that:

The Comptroller may disclaim any right to

the exclusive use of any specified element

of the trademark.

Descriptive Descriptive WordWord Mark Mark

Thus, because of this;

the applicant is also informed that should the

amendment be made, the mark would be

registered with a condition as follows:

Descriptive Descriptive WordWord Mark Mark

i. If the mark applied for is amended by

changing the word mark to a label, which

is considered to be distinctive;

Example:

Descriptive Descriptive WordWord Mark Mark

then registration is granted with the

condition:

“The label is registered only as distinctively

reproduced.”

Descriptive Descriptive WordWord Mark Mark

ii. If the mark applied for is amended by

adding a registerable word, or a

registerable feature or element;

Example:

Partridge Kitchen Wooden Tables

or

Descriptive Descriptive WordWord Mark Mark

Kitchen Wooden Tables

then registration is granted with the

condition:

“Registration gives no right to the exclusive

use of the words ‘Kitchen’, ‘Wooden’, and

‘Tables’.”

Descriptive Descriptive WordWord Mark Mark

If the requested amendment is not received

within the specified time,

the application in question is refused as per

Articles 4(1)(c) and 35(3)

of the Trademarks Act 2000.

Descriptive Descriptive WordWord Mark Mark

Article 35(3) of the Trademarks Act 2000 states:

If the applicant fails to satisfy the Comptroller

that those requirements are met, or to amend

the application so as to meet them, or fails to

respond before the end of the specified period,

the Comptroller shall refuse the application.

Descriptive Descriptive WordWord Mark Mark

If the requested amendment is received

within the specified time, the added element

in the mark is examined on absolute and

relative grounds.

Descriptive Descriptive WordWord Mark Mark

If the amended mark passes the Absolute

and Relative grounds examination, then the

Notification of Registration with the relevant

condition as indicated earlier is issued.

Descriptive Descriptive WordWord Mark Mark

ClarificationsClarifications

&&

DiscussionDiscussion

Other Examples:Other Examples:

List of goods and servicesList of goods and services

Class 36:Class 36:

Insurance; Financial affairs; Monetary affairs; Insurance; Financial affairs; Monetary affairs; Real estate affairs.Real estate affairs.

Descriptive Descriptive WordWord Mark Mark

Other Examples:Other Examples:

List of goods and servicesList of goods and services

Class 16:Class 16:

Office supplies; stationery.Office supplies; stationery.

Descriptive Descriptive WordWord Mark Mark

OFFICE MATEOFFICE MATE

Grazzi ĦafnaGrazzi Ħafna

Thank you very muchThank you very much

Grazie milleGrazie mille

Merci beaucoupMerci beaucoup

Vielen DankVielen Dank

Muchas graciasMuchas gracias