When is Harvard not Harvard ?

Kat friend Shawn Poon describes the recent dispute in Singapore over the university name “Harvard”.

In the recent IPOS decision of Harvard Club of Singapore v President and Fellows of Harvard College [2019] SGIPOS 14, the President and Fellows of Harvard College (the body corporate constituting Harvard University) (“Applicant”) filed two applications to register “HARVARD CLUB OF SINGAPORE” and “HARVARD UNIVERSITY OF SINGAPORE” in Class 41, both for “Club Services [education or entertainment]”. They were opposed by the Harvard Club of Singapore (“Opponent”).

The Opponent was registered in 1969 and, for most of its existence, was recognised by the Applicant as the official Harvard Club in Singapore. However, in 2015, the Applicant’s Harvard Alumni Association (HAA) terminated its relationship with the Opponent and revoked its status as a recognised Harvard alumni club, as a result of the Opponent’s failure to comply with HAA’s request that its president Dr Irene Lee step down.

                                                      If you don’t read Latin, maybe Harvard is not for you

The Registrar’s Decision

The Opponent argued that the registration of the trademarks should be prohibited under S 8(7)(a) TMA on the ground that their use in Singapore constitutes passing off.

It was not disputed that the goodwill attached to the “HARVARD” name and mark belongs to the Applicant. The Opponent however argued that this did not automatically mean that the Applicant owns the goodwill attached to all trademarks containing “HARVARD”, claiming that it owned goodwill attached to “HARVARD CLUB OF SINGAPORE” as a result of long use.

The Applicant countered by arguing that it owned all goodwill attached to “HARVARD CLUB OF SINGAPORE” because each Harvard Club is/was a trademark licensee of the Applicant, and thus the goodwill generated in connection with the licensed name/mark inured to the benefit of the Applicant.

Under Singapore law, for there to be a licensor-licensee relationship, the “licensor [must exert] some manner or form of control or supervision over the [licensee’s] goods”: Weir Warman Ltd v Research & Development [2007] 2 SLR (R) 1073 (“Weir Warman”). The Registrar found that, during the early years of the Opponent, i.e. from 1969 to 1975, the Opponent’s officers sought and received recognition and support from the Applicant’s alumni office, the Opponent complied with the Applicant’s basic requirements, and the Applicant was closely connected with its alumni network.

The US decision of Villanova University v Villanova Alumni Educational Foundation, Inc 123 F Supp 2d 293 (E.D. Pa. 2000) (“Villanova”), cited with approval in Weir Warman provided that—

the existence of an implied licence requires evidence that permission was given to use the mark, coupled with an exercise of reasonable control over such use.

During the 2000s up to 2011, the Registrar found that the Opponent was clearly aware of and abided by the various rules and regulations promulgated by HAA to govern Harvard Clubs around the world. During the period of 2011 to 2014, the Registrar found that the Opponent recognised the trademark rights of the Applicant and conducted itself in a manner consistent with a trademark licensee. Further, there was also evidence that the Applicant had actively supported the Opponent through the provision of technical support, list of alumni in Singapore, and other contact information.

The Registrar therefore found that the parties were in a trademark licensor-licensee relationship on the basis that:

(a) The Opponent’s founders regarded the Applicant as the Opponent’s fount of authority;

(b) The Opponent received formal recognition and support very shortly after it was registered (including permission to use “Harvard” and “Harvard Club” subject to requirements);

(c) The Applicant exerted reasonable control and supervision over the Opponent’s use;

(d) The Opponent acted in a manner consistent with that of a licensee, in that it recognised the Applicant’s trademark rights and sought its help in enforcing them against an unauthorised alumni body.

On the issue of ownership of goodwill attached to “HARVARD CLUB OF SINGAPORE”, it is well-established that the goodwill in a licensor-licensee relationship would be owned by the licensor.

The Opponent argued that the Applicant’s rights to “HARVARD” did not extend to “HARVARD CLUB OF SINGAPORE”, and that the latter had acquired a secondary meaning as designating the Opponent’s services and activities exclusively. The Registrar was not persuaded, holding as follows:

(a) “HARVARD” is a distinctive trademark that designates the Applicant as its source;

(b) The vast majority of the authorised Harvard alumni clubs adopt the format “HARVARD CLUB OF [Location]”. Therefore, “HARVARD CLUB OF SINGAPORE” inherently suggests to actual and potential alumni that the Opponent is authorised by the Applicant;

(c) The Opponent was able to use “HARVARD” and “HARVARD CLUB” only because of the implied trademark licence granted by the Applicant. Therefore, it was the Applicant who enjoys the goodwill connected with “HARVARD CLUB OF SINGAPORE”.

Accordingly, the Registrar found that the Opponent did not own goodwill to sustain an action in passing off against the Applicant. Therefore, the ground under S8(7)(a) TMA failed.

Bad Faith

The Opponent unsuccessfully advanced three main lines of argument on bad faith as follows:

(a) The Applicant filed the trademarks without any authority. This argument was rejected on the evidence;

(b) The Applicant’s actions were dishonest, improper or otherwise unacceptable, in that the trademarks applied for were designed to put pressure on Dr Lee to comply with HAA’s demands to step down and aimed to usurp the Opponent’s role as the alumni club. This argument was rejected on the basis that the Applicant as owner of the goodwill could choose to take away the right from the Opponent and give to another;

(c) It was bad faith for the Applicant to apply to register two trademarks at the same time for club services in Class 41. The Registrar rejected this claim, since a society could use different marks to denote its services.

Section 7(5) TMA In relation to “HARVARD CLUB OF SINGAPORE”, the Opponent relied on S7(5) TMA, which states that a “trade mark shall not be registered if or to the extent that its use is prohibited in Singapore by any written law or rule of law”. The written law relied on was S4(3) of the Societies Act, which states that the Registrar may refuse to register a society if inter alia its name is identical to that of an existing society. The argument was that the Applicant, by applying to register “HARVARD CLUB OF SINGAPORE” intended to form a new society under that name and the Register of Societies would have to reject it.

This argument was rejected by the Registrar, who held that S7(5) TMA concerned actual “use” in the real world, which was clearly different from the act of registration of a society.

Accordingly, the Opponent failed on all grounds of opposition.

                                                               Don’t ask me: I’m a dog and I went to Yale

Brief Commentary

1. the most interesting ground is passing off, based on the finding that the parties were in a trademark licensee-licensor relationship. As such, it underscores the importance of a licensor exercising requisite control over the licensee’s goods and services for the trademark licence to be valid in order for goodwill to inure to the licensor.

2. Also notable is the finding that the goodwill associated with “Harvard Club of Singapore” belonged to the Applicant. In the author’s view, a different conclusion may have been reached if the Opponent had used the licensed marks “Harvard” / “Harvard Club” with additional distinctive elements e.g. “Irene Lee’s Harvard Club”, and the Applicant applied to register “Irene Lee’s Harvard Club”.

3. In this case, the use of “Harvard Club of Singapore” should be considered as being part of the implied licence to use “Harvard” and “Harvard Club” since “of Singapore” is descriptive / non-distinctive.

The author understands that an appeal to the High Court has just been filed.