Case Details
- Citation: [2019] SGIPOS 14
- Court: Intellectual Property Office of Singapore
- Date: 2019-10-10
- Judges: Ong Sheng Li, Gabriel, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: President and Fellows of Harvard College
- Defendant/Opponent: Harvard Club of Singapore
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Societies Act, Trade Marks Act
- Cases Cited: [2016] SGIPOS 10, [2016] SGIPOS 9, [2018] SGIPOS 3, [2019] SGIPOS 14
- Judgment Length: 28 pages, 15,613 words
Summary
This case involves a dispute between Harvard University, represented by the President and Fellows of Harvard College, and the Harvard Club of Singapore. The university applied to register two trade marks, "HARVARD CLUB OF SINGAPORE" and "HARVARD UNIVERSITY CLUB OF SINGAPORE", which the Harvard Club of Singapore opposed. The key issues were whether the university's applications were made in bad faith and whether the use of the marks would constitute passing off or be prohibited by Singapore law. The Intellectual Property Office of Singapore ultimately ruled in favor of the university, finding that the opposition grounds were not made out.
What Were the Facts of This Case?
Harvard University is a highly prestigious institution that attracts a significant number of international students, including over 100 students from Singapore each year. Part of Harvard's appeal is the access it provides to alumni networks through Harvard Clubs located around the world. The Harvard Club of Singapore has served Harvard alumni in Singapore since 1969 and was previously recognized by the university as the official Harvard Club in the country.
However, in 2015, the Harvard Alumni Association (HAA) terminated its relationship with the Harvard Club of Singapore and revoked its status as the recognized Harvard alumni club. This occurred during the tenure of the Harvard Club of Singapore's president, Dr. Lee Siew Mun Irene. The HAA cited concerns about the club's compliance with its bylaws and operating guidelines as the reasons for the termination.
After this falling out, the President and Fellows of Harvard College, the corporate body that constitutes Harvard University, applied to register the trade marks "HARVARD CLUB OF SINGAPORE" and "HARVARD UNIVERSITY CLUB OF SINGAPORE" in 2014. The Harvard Club of Singapore then opposed these trade mark applications.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the university's trade mark applications were made in bad faith under Section 7(6) of the Trade Marks Act.
- Whether the use of the proposed trade marks would constitute passing off under Section 8(7)(a) of the Trade Marks Act.
- Whether the use of the proposed trade marks would be prohibited in Singapore by written law or rule of law under Section 7(5) of the Trade Marks Act, read with Section 4(3)(c) of the Societies Act.
How Did the Court Analyse the Issues?
On the issue of bad faith, the Hearing Officer examined the background circumstances, including the termination of the HAA's relationship with the Harvard Club of Singapore and the university's subsequent trade mark applications. The Hearing Officer found that the university's actions were not motivated by an intent to undermine or take advantage of the Harvard Club of Singapore, but rather to protect its brand and intellectual property rights. The Hearing Officer noted that the university had a legitimate interest in ensuring the proper use of its name and marks by affiliated organizations.
Regarding passing off, the Hearing Officer considered the evidence on the reputation and goodwill of the Harvard Club of Singapore, as well as the likelihood of confusion between the university's proposed marks and the club's existing name. The Hearing Officer concluded that while the Harvard Club of Singapore had established goodwill, the university's proposed marks were sufficiently distinct to avoid a likelihood of confusion.
On the issue of prohibition under the Societies Act, the Hearing Officer examined whether the use of the proposed marks would be prohibited by law. The Hearing Officer found that the Societies Act did not prohibit the university from using its own name and marks, even if that resulted in the Harvard Club of Singapore no longer being able to use those marks.
What Was the Outcome?
The Hearing Officer ultimately dismissed the opposition and allowed the university's trade mark applications to proceed to registration. The Hearing Officer found that the university had not acted in bad faith, that there was no likelihood of passing off, and that the use of the proposed marks would not be prohibited by law.
Why Does This Case Matter?
This case is significant for several reasons:
First, it provides guidance on the application of the bad faith ground of opposition under the Trade Marks Act. The Hearing Officer's analysis emphasizes that the focus should be on the applicant's intentions, rather than the mere fact that there is a dispute between the parties.
Second, the case highlights the importance of reputation and goodwill in passing off claims. Even where an opponent has established goodwill in a name or mark, the court may still find that the applicant's proposed mark is sufficiently distinct to avoid a likelihood of confusion.
Finally, the case demonstrates the limits of the Societies Act in prohibiting the use of a name or mark. The Hearing Officer made it clear that the Act does not prevent an entity from using its own name, even if that results in another organization no longer being able to use that name.
Overall, this decision provides valuable guidance for trade mark practitioners on the assessment of bad faith, passing off, and statutory prohibition grounds of opposition in Singapore.
Legislation Referenced
Cases Cited
- [2016] SGIPOS 10
- [2016] SGIPOS 9
- [2018] SGIPOS 3
- [2019] SGIPOS 14
Source Documents
This article analyses [2019] SGIPOS 14 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.