McLaren fails to expunge MCLAREN trademark

In McLaren International Ltd v Lim ([2007] 7 MLJ 581, November 1 2007), the Court of Appeal has dealt a serious blow to Formula 1 team McLaren International Ltd's attempt to protect its famous trademark MCLAREN.

Lim Yat Meen, a Malaysian national, registered the trademark MCLAREN in 1992 for articles of clothing and shoes, among other things. McLaren is the owner of the well-known trademark MCLAREN in association with Formula 1 racing. When made aware of the registration, McLaren filed a motion to expunge the mark on the grounds, among others, that use of the mark caused or was likely to cause confusion or deception. Lim claimed that it was unaware of McLaren's mark when it coined the brand MCLAREN for his range of executive men's shoes in 1992.

Since the mark had been registered for more than seven years, the registration was deemed to be valid unless it was established that the registration had been obtained fraudulently or violated Section 14 of the Trademarks Act 1976 (eg, a mark shall not be registered if its use is likely to deceive or cause confusion to the public, or would be contrary to law).

The Court of Appeal held that an applicant must prove that it is a person aggrieved in order to initiate an expungement action. After weighing the facts and the evidence, the court held that McLaren was not a person aggrieved and thus had no standing to initiate the action. The court did not give a definition of an 'aggrieved person'. Instead, it stated that the best approach in deciding whether an applicant is an aggrieved person is to:

"bring all the available evidence before the judge, rather than debate on whether the terminology of an 'aggrieved person' should be given a wide or a strict interpretation."

The court alluded to the fact that the mark was registered in 1992, when McLaren's mark was not used in Malaysia. Moreover, McLaren was "in the business of fast lanes and fast cars", while Lim was "in the mundane business of shoes and slippers". The court was thus of the view that McLaren was unlikely to suffer any damage. McLaren is not yet established in Malaysia, and even if it ultimately sets up business in the country, the court concluded that "in all probability, [such business] would be different from the respondent's footwear business".

It appears that the court adopted a restrictive approach in deciding whether an applicant is an aggrieved person. The concept of 'aggrieved person' seems to be limited to entities whose business or trading interests would suffer direct damage. Arguably, this approach is not in line with the letter and spirit of the Agreement on Trade-Related Aspects of Intellectual Property Rights, under which the interests of the owner of a well-known trademark must be protected irrespective of whether the owner has a local business presence or whether the businesses involved are similar.

Teo Bong Kwang, Wong Jin Nee & Teo, Kuala Lumpur