Marqonsult

Lockheed Martin Corp v Raytheon Co [2010] 7 MLJ 624

The applicant, Lockheed Martin Corporation was unsuccessful in expunging the respondent, Raytheon Company’s trademark “PAVEWAY” in respect of laser-guided bomb (“LGB”) kits from the Register.

The applicant claimed that “PAVEWAY” was directly descriptive of LGB kits and hence, contradicts s 10(1)(d) of the Trade Marks Act 1976 (“the Act”), and was also non-distinctive pursuant to s 10(1)(e) read with s 10(2A) of the Act. On that basis, the applicant being an aggrieved person, brought the expungement proceedings under s 45(1) of the Act alleging that the entry of the registered trademark “PAVEWAY” was made without sufficient cause or is an entry wrongfully remaining in the Register.

In arguing that the trademark was a descriptive term, the applicant pointed out that the word “paveway” was generic in the defense industry because “paveway” meant technology that used lasers to guide a bomb to a target. Evidence was shown that in the United States of America all LGB kits sold were referred to as paveways.

However, since it is well established that trademark law in Malaysia is territorial in nature, the learned Judge held that the test for genericism is based on local perception and not how the trademark is perceived in other countries. As the applicant had never sold their goods in Malaysia and there has been no use by any other person apart from the respondent of the trademark “PAVEWAY” in Malaysia, it was impossible for the trademark to have become generic or to have lost its distinctiveness.

Furthermore, the relevant time at which the trademark must be distinctive is the date of its application in Malaysia, in this case, 1 August 2005. In making an affirmative finding of factual distinctiveness at the time of registration, the learned Judge relied on the fact that the respondent had been the sole user of the trademark “PAVEWAY” in Malaysia since 1983 and internationally since 1970. Therefore, at the time of registration and also at the time these proceedings were initiated, the trademark was distinctive because the respondent was and still is the only manufacturer and distributor of LGB kits in Malaysia.

The High Court in coming to its conclusion upheld the territorial nature of trademarks and further substantiated that the relevant date at which the trademark must be distinctive is at the date of its application in Malaysia.

ABOUT THE AUTHOR:

Clara Yip
Advocate & Solicitor (Malaya and New Zealand) (non-practicing); Registered Patent and Trademark Agent; Founding Partner, MarQonsultIP