In Harvard Club of Singapore v President and Fellows of Harvard College [2019] SGIPOS 14, the dispute was over the trade mark “HARVARD CLUB OF SINGAPORE” between the former official alumni club in Singapore and the President and fellows of Harvard College. The Harvard Club of Singapore (“Opponent”) was an official alumni club of Harvard University (formed by the President and fellows of Harvard College (“Applicant”)) whose status was revoked (“revocation”) by the applicant due to issues concerning leadership of the club and compliance within the guideline provided by the Harvard Alumni Association (“HAA”). With the revocation, the applicant withdrew its consent to the Opponent’s use of the names “Harvard” and “Harvard Club”.

Intellectual Property Office of Singapore

Hearing Officer: Mr. Ong Sheng Li, Gabriel (Principal Assistant Registrar of Trade Marks)

Decision Date: 10 October 2019

Subsequently, the Applicant applied for trade mark applications “HARVARD CLUB OF SINGAPORE” (40201402804X) and “HARVARD UNIVERSITY CLUB OF SINGAPORE” (40201402805W) (collectively, “Application Marks”) in Class 41 for “Club Services [education or entertainment]”. The trade mark applications were opposed by the Opponent and the opposition hearing went before the Principal Assistant of Registrar of Trade Marks (“PAR”). The Opponent nominated several grounds of opposition under the Trade Marks Act (Cap 332, Rev Ed 2005) including Sections 8(7)(a), 7(6) and 7(5) read with Section 4(3)(c) of the Sedition Act: Use Prohibited by Law. None of the grounds of opposition was established and the PAR directed the Application Marks to registration.

Section 8(7)(a) of the Trade Marks Act: Passing Off

The Opponent argued that: (1) owning the goodwill attached to “Harvard” did not give the Applicant an entitlement to the goodwill for all variations of trademarks containing “Harvard”; (2) it owned the goodwill to “Harvard Club of Singapore” due to its long use; and (3) it thereby gave it the right to prevent anyone from registering the application marks.

The Applicant counter-argued that it owned all the goodwill, and that each of its authorised alumni clubs is a trademark licensee. The PAR found there exists a licensor-licensee relationship between Harvard University and Harvard Alumni Clubs all over the world. Harvard University, because of the “control” it exerts on the Harvard Alumni Clubs, owns the goodwill attached.

The PAR concluded that the Applicant owned the goodwill in the name “HARVARD”.

Since the Opponent had no goodwill with which to sustain a passing off action, the PAR held that the opposition on the grounds of Section 8(7)(a) of the Trade Marks Act was not established.

Section 7(6) of the Trade Marks Act: Bad Faith

The Opponent argued that: (1) the application marks were filed without authority from the Applicant; (2) the timing of the application marks, including an identical mark, was no coincidence and a pressure tactic, among others; and that (3) the Applicant had no intention to use the Application Marks.

The PAR rejected the first argument due to a lack of evidence from the opponent. Since the Registrar ascertained that the Applicant owned the goodwill in the name, he found that it could file the trade marks at any time. Lastly, he noted that there was no requirement for immediate use of a registered mark.

Accordingly, the PAR determined that the opposition on this ground failed.

Section 7(5) of the Trade Marks Act, Read with Section 4(3)(c) of the Sedition Act: Use Prohibited by Law

The PAR reasoned that the Trade Marks Register and Societies Register are wholly separate regimes which do not intersect on this particular issue. The crucial element of Section 7(5) of the Trade Marks Act is “use,” and the registration of a society does not constitute actual use; therefore, Section 4(3)(c) of the Sedition Act was not applicable here.

The PAR concluded that the opposition against “HARVARD CLUB OF SINGAPORE” failed on this ground as well.

Takeways

In the present case, the revocation of “HARVARD CLUB OF SINGAPORE” of its official status as an Harvard Alumni Club on the 29 May 2015, was prima facie evidence that there was “control” exerted by Harvard University and/or HAA on its Alumni Clubs all over the world. The termination occured because the By-laws of the HAA has stated that a President of the Alumni Club may not serve more than a three-year term. The current President of the Opponent was re-elected as President after a three-year term. The conduct went against the By-laws and operating guidelines of the HAA.

The Opponent subsequently appealed against the decision of the PAR before the High Court of Singapore.

Disclaimer: The above is provided to assist in the understanding of the decision by the Registrar at the Intellectual Property Office of Singapore. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.