Harvard University successful in appeal against two grounds of opposition - Harvard Club of Singapore vs. President and Fellows of Harvard College [2020] SGHC 77

In a decision rendered by the by the High Court of Singapore, the respondent successfully defended against the grounds of opposition in relation to the two trade marks which the University sought to register. The appellant’s opposition was based on the following grounds:

• that based on the law of passing off, goodwill, misrepresentation and likelihood of damages was established (Section 8(7)(a) Trade Mark Act);
• that the Applicant’s intention of registering its mark is one that was made in bad faith (Section 7(6) of the Trade Mark Act); and
• the use of the Harvard Club of Singapore (‘’HCS Mark”) is prohibited in Singapore by written law or rule of law (Section 7(5) of the Trade Mark Act).

 

(A)       Who are the parties involved in this case?

Harvard Club of Singapore (“Appellant”).

The Appellant has served the Harvard alumni in Singapore for close to 50 years and up until 2015, it was recognized as the only official Harvard alumni club in Singapore with all the attendant benefits that followed.

 

President and Fellows of Harvard College (“Respondent”).

The Respondent is the body corporate which constitutes Harvard University. The relationship between the Appellant and Respondent came to an end when the executive director of the Harvard Alumni Association terminated the relationship between the Appellant and Respondent and revoked its status as an official Harvard club.

 

(B)       What actually happened?

This Appeal to the High Court arose from the decision of the Principal Assistant Registrar in Harvard Club of Singapore v. President and Fellows of Harvard College [2019] SGIPOS 14 to dismiss the Appellant’s opposition to the Respondent’s application to register the trade marks (“Marks”) ‘Harvard Club of Singapore (i.e. HCS mark) and ‘Harvard University Club of Singapore’, both in Class 41.

 

(C)       What are the issue(s) in dispute?

The Opponent relied on three grounds of opposition under the Trade Marks Act which primarily reads as follow:

• Section 7(6) of the Act: a trade mark shall not be registered if the application is made in bad faith;
• Section 8(7)(a) of the Act: that a trade mark shall not be registered if its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; and
• Section 7(5) read with section 4(3)(c) of the Societies Act: where a trade mark shall not be registered if or to the extent that its use is prohibited by any written law or rule of law.

 

(D)       Holding

The Appellant failed on all grounds. The appeal was dismissed and the Judge affirmed the PAR’S decision to allow the registration of the Application Marks.

 

(E)        Rationale for holding

Decision on Section 7(6)

The Court rejected the following three main arguments that the Appellant relied on:

• That the Marks were filed without proper authority;
• That the Respondent had conducted itself dishonestly; and
• That the Respondent had no intention in using the Marks

It was previously established that the Respondent owns the goodwill attached to the Marks and that the Appellants right to use the name ‘Harvard Club of Singapore’ was contingent on the Respondent’s continued recognition of affiliation.

It was crystal from the evidence that the Respondent’s authorized persons had the authority to file for the Marks and as goodwill was generated in connection with the use of the Marks, the Respondent has the intention to use the Marks.

 

Decision on Section 8(7)(a)

The Court had the opportunity to consider implied license between non-commercial organizations and the ownership of goodwill.

Goodwill:

Following the case of The Singapore Professional Golfers’ Association v Chen Eng Waye and others [2013] 2 SLR 495 at [21] (“SPGA”), the Court stated that the goodwill between a trader and his customers is not directly concerned with protecting a specific mark, logo or get up of a business. The Court found that the Harvard Marks and the Marks in question are separate and distinct.

The relevant goodwill is the attractive force that draws the relevant public to the business of the Appellant as an alumni club i.e. the services provided and activities organised by the Club for the actual and potential alumni of the University. The Court found that any reference to goodwill should be construed in this light.

 

Misrepresentation:

The Court briefly touched on the distinctiveness of the Marks as part of the misrepresentation. It found that the Marks are not distinctive of the Appellant but of the Respondent and its Harvard Clubs as a whole. Even assuming that the Club could prove ownership of the relevant good will, its opposition on the ground of passing off still failed as the Respondents’ registration and subsequent use of the Marks would no amount to an actionable misrepresentation.

Under the law of passing off, the Court fund that there was an implied license formed between the Appellant and the Respondent as the Respondent has exerted sufficient control and supervision of the Club. Furthermore, with reference to the facts of the case, it was found that the Respondent was the owner of all the goodwill generated by the Appellant.

In light of the above, it is clear that an implied license may be created from the conduct of the parties especially when there is some degree of control and supervision involved.

 

Decision on Section 7(5) read with Section 4(3)(c) of the Societies Act

The Court rejected the Appellants ground of opposition under this section and noted that the prohibition according to “written law or rule of law” under Section 7(5) was not meant to cover this situation due to the following:

• The phrase “written law” refers to an express prohibition in statute.
• Section 4(3)(c)(i) of the Societies Act confers upon the Registrar of Societies a discretion to reject the registration of a society. A discretion, by definition, may or may not be exercised and cannot fall within the definition of “rule of law”.
• That the word “use” relates to “actual use” in the trademark sense, and does not cover the mere registration of a society.

 

(F)        Points of interest

There are two lessons to take away from this decision. First, that implied licences can be found where the conduct in terms of sufficient control and supervision can be determined between both commercial and non-commercial organizations. Second, that the prohibition according to “written law or rule of law” under Section 7(5) is not meant to cover situations such as the rejection on registration of a society under Section 4(3)(c)(i) and that the word use is relevant to actual use of in the trade mark sense.