Clash of the Titans

Raytheon retains right to use trade mark for laser guided bomb kits in Malaysia

 

US defence contracting giants, Raytheon Company and Lockheed Martin Corporation have been engaged in lengthy litigation spanning numerous countries over the use of the term “PAVEWAY” as a trade mark for laser guided bomb kits produced by both parties. 

Raytheon has been manufacturing laser guided bomb kits that are attached onto standard GBU-10, GBU-11, GBU-12 warheads. These kits provide the bombs with laser guidance capability. Raytheon has branded its laser guided bomb kits as “PAVEWAY” since the 1970s. “PAVEWAY” laser guided bombs manufactured by Raytheon have been used by armed forces all over the world.

The U.S. government approved Lockheed Martin as a second supplier of laser guided bomb kits in 2005.

Lockheed Martin disputes Raytheon’s use of the term “PAVEWAY” in a trade mark sense and takes the position that “PAVEWAY” is a generic term which describes the technology employed by both companies for their laser guided bomb kits. In other words, Lockheed Martin claims that it is not a term which Raytheon has exclusive rights to.

In Malaysia, only Raytheon has ever sold laser guided bomb kits to the Malaysian government and Raytheon has done so since the 1980s. Lockheed Martin on the other hand, has not sold any of their laser guided bomb kits to Malaysia but has circulated information about their products to the Malaysian government. 

In 2005, Raytheon registered “PAVEWAY” as a trade mark in Malaysia. Subsequently, in 2008, Lockheed Martin filed an application in the High Court to expunge the trade mark on the basis of it being a generic term.

Raytheon succeeded in defending the application to expunge on the basis that the “PAVEWAY” trade mark satisfied all provisions of section 10 of the Trade Marks Act 1976 for a registrable trade mark, primarily that it was an invented word, it had no direct reference to the goods it was applied on and it was a distinctive mark. 

Much emphasis was placed on the principle that trade mark law is territorial in nature which means that the Courts ought to only have regard to evidence of use of the mark in Malaysia. Lockheed Martin was contending that their use of the mark in the United States ought to have been taken into consideration given that the market for laser guided bombs is unique and confined to a specialised market.

The High Court reaffirmed and followed established principles of McLaren International Ltd v Lim Yat Meen [2008] 1 CLJ 613 and Lim Yew Sing v Hummel Int Sports & Leisure [1996] 3 MLJ 7 which confirmed that the first to use the mark in Malaysia has greater rights and evidence of use outside Malaysia cannot operate to support an application to expunge a Malaysian trade mark where no such use existed in Malaysia.

Lockheed Martin appealed to the Court of Appeal but its appeal was dismissed. 

Lockheed Martin then applied for leave from the Federal Court to determine the question of “whether a mark, if perceived to be generic in its country of origin, could be registered in Malaysia”.  Raytheon responded to this contention by arguing among other things, that the question had already been dealt with in the case of Meidi-Ya Co Ltd Japan and Anor v Meidi (M) Sdn Bhd [2009] 2 CLJ 15 which applied the “McLaren” and “Lim Yew Sing” principles.  Lockheed Martin was not granted leave to appeal.

In light of these rulings, the Malaysian courts have reaffirmed the doctrine of first use and territoriality in Malaysian trade mark law.

 

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