Case Details
- Citation: [2020] SGHC 77
- Title: Harvard Club of Singapore v President and Fellows of Harvard College
- Court: High Court of the Republic of Singapore
- Date of Decision: 20 April 2020
- Judge: Chan Seng Onn J
- Case Number: Tribunal Appeal No 22 of 2019
- Tribunal/Court Below: Principal Assistant Registrar (PAR) decision in Harvard Club of Singapore v President and Fellows of Harvard College [2019] SGIPOS 14
- Coram: Chan Seng Onn J
- Appellant: Harvard Club of Singapore
- Respondent: President and Fellows of Harvard College
- Counsel for Appellant: Wun Rizwi (RHTLaw Asia LLP)
- Counsel for Respondent: Chew Lixian Ashley (Ella Cheong LLC)
- Legal Areas: Trade Marks and Trade Names — Passing off; Trade Marks and Trade Names — Ownership; Trade Marks and Trade Names — Grounds for refusal of registration
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (including ss 7(5), 7(6), 8(7)(a)); Societies Act (Cap 311, 2014 Rev Ed) (including s 4(3)(c)); Trade Marks Ordinance; Trade Marks Act 1938; Application Marks (as described in the judgment)
- Trade Marks at Issue (Application Marks):
- Application No. 40201402804X: “HARVARD CLUB OF SINGAPORE” (Class 41: Club Services [education or entertainment])
- Application No. 40201402805W: “HARVARD UNIVERSITY CLUB OF SINGAPORE” (Class 41: Club Services [education or entertainment])
- Procedural Posture: Appeal against PAR’s dismissal of opposition; High Court dismissed appeal and allowed both applications to proceed to registration
- Judgment Length: 29 pages; 13,646 words
- Cases Cited (as provided): [2007] SGHC 59; [2010] SGCA 14; [2018] SGHC 238; [2019] SGHC 200; [2019] SGIPOS 14; [2020] SGHC 77
Summary
Harvard Club of Singapore v President and Fellows of Harvard College [2020] SGHC 77 concerned two trade mark applications filed by Harvard University for marks incorporating “HARVARD” and “HARVARD CLUB OF SINGAPORE” / “HARVARD UNIVERSITY CLUB OF SINGAPORE”. The Harvard Club of Singapore (“the Club”) opposed registration, arguing, among other things, that the University’s applications should fail because the Club had goodwill in the marks and because the University acted in bad faith and/or in a manner prohibited by law.
The High Court (Chan Seng Onn J) dismissed the Club’s appeal. The court held that the Club did not establish the first element of passing off: the goodwill associated with the relevant marks belonged to the University. This conclusion was reached by reference to the relationship between the parties and the implied licence framework under which Harvard Clubs were permitted to use Harvard names and marks while remaining officially affiliated. Once the University withdrew consent and terminated the Club’s official status, the Club’s claim to goodwill could not be sustained.
On the other grounds, the court found that the Club failed to prove the University’s “bad faith” under s 7(6) of the Trade Marks Act, and it also failed to establish the statutory prohibition argument under s 7(5) of the Trade Marks Act read with s 4(3)(c) of the Societies Act (as far as it applied to the first application mark). The result was that both trade mark applications were allowed to proceed to registration.
What Were the Facts of This Case?
The appellant, Harvard Club of Singapore, was registered as a society on 26 May 1969 and had served Harvard alumni in Singapore for close to 50 years. Until 2015, it was recognised as the only official Harvard alumni club in Singapore. The dispute arose after the University’s alumni association and the University itself sought to change the Club’s leadership, and the Club resisted those efforts.
The respondent, President and Fellows of Harvard College (“the University”), is the corporate body constituting Harvard University. The “HARVARD” brand is globally prominent, and Harvard Clubs around the world are supported by the Harvard Alumni Association (“HAA”), an office within the University. The HAA operates websites and publishes materials setting out requirements and guidelines for Harvard Clubs, including annual reporting and officer listings to retain official affiliation and to receive HAA services such as website hosting and email forwarding.
Crucially, the HAA’s Guidelines and related materials expressly contemplate that Harvard Clubs are granted permission to use the “Harvard Club” name, but only on condition of compliance with University and HAA policies. The Guidelines also indicate that non-compliance may result in the Club losing the right to use “Harvard” names. The court treated these materials as evidence of an ongoing permission structure rather than an independent proprietary right in the “HARVARD” branding.
The relationship between the Club and the University ended on 29 May 2015. In a termination letter, the University withdrew its consent for the Club to use “Harvard” and “Harvard Club” names, as well as certain University logos and shields. The letter required the Club to stop using Harvard names and logos immediately and stated that any registrations made for such purposes must be cancelled. It also reserved the right to recognise and appoint another club as the official Harvard alumni club in Singapore. The termination followed a year-long dispute during the presidency of Dr Lee Siew Mun Irene, during which the HAA attempted to secure leadership change.
What Were the Key Legal Issues?
The appeal required the court to consider whether the Club could successfully oppose the University’s trade mark applications on grounds that, in substance, overlapped with passing off and ownership of goodwill. The key issue under s 8(7)(a) of the Trade Marks Act was whether the Club had goodwill in the relevant marks such that the first element of passing off was made out. This turned on who owned the goodwill associated with the “HARVARD” and “HARVARD CLUB” branding in Singapore.
A second major issue concerned s 7(6) of the Trade Marks Act (bad faith). The Club advanced multiple lines of argument: that the applications were filed without authority (because the HAA filed in the University’s name), that the University’s conduct was dishonest or otherwise unacceptable, and that filing two marks simultaneously showed a lack of bona fide intention to use them.
Finally, the court had to address the Club’s reliance on s 7(5) of the Trade Marks Act read with s 4(3)(c) of the Societies Act. This ground was directed at the first application mark (“HARVARD CLUB OF SINGAPORE”) and required the court to consider whether the use of the mark was prohibited in Singapore by written law or rule of law, as contemplated by the trade mark statute.
How Did the Court Analyse the Issues?
On the passing off / goodwill issue under s 8(7)(a), the High Court endorsed the PAR’s approach. The PAR had found that the goodwill generated by the Club’s use of the Application Marks belonged to the University by virtue of an implied licence. The court accepted that, in the default position, goodwill remains with the proprietor of the underlying brand unless there is an agreement or other basis for goodwill to accrue to another party. In this case, the court treated the Club as a “mere licensee” of the University’s trade marks, permitted to use them only because of the official affiliation and consent structure.
The court’s reasoning was anchored in the nature of Harvard Clubs and the documentary framework governing them. The HAA Club Standards and Guidelines were not merely promotional; they were operational requirements tied to continued affiliation. The Guidelines explicitly stated that the University grants permission to use the “Harvard Club” name and that compliance is required to retain that permission and associated services. This supported the inference that the Club’s use was derivative of the University’s brand and subject to withdrawal.
Accordingly, the court held that the Club could not establish the first element of passing off. Since the goodwill associated with “HARVARD” and “HARVARD CLUB” in Singapore was treated as belonging to the University, the Club’s opposition failed at the threshold. The court also observed that the PAR’s passing off analysis, while primarily directed at “HARVARD CLUB OF SINGAPORE”, applied equally to “HARVARD UNIVERSITY CLUB OF SINGAPORE” because of the similarity in names and the shared branding elements.
On bad faith under s 7(6), the court agreed that the Club’s evidence was insufficient. First, the Club argued that the applications were filed by the HAA in the University’s name without authority. The PAR had rejected this argument “without any hesitation” because there was no evidence to support it. The High Court did not disturb that finding, emphasising that allegations of bad faith require evidential support rather than inference.
Second, the Club argued that the University’s conduct fell within the concept of bad faith, including dishonest, improper, or unacceptable conduct. The court’s earlier finding that the University owned the goodwill attached to the marks influenced this analysis. If the University owned the goodwill and had the right to control the use of its branding, then the act of filing for trade mark registration was not inherently improper. The court also noted that the University’s right to file was not dependent on the timing of the termination letter; it could file at any time, including before the termination.
Third, the Club argued that filing two trade marks at the same time demonstrated a lack of bona fide intention to use them. The court rejected this as well. It reasoned that trade marks and society names are different legal concepts, and the inability of the University to register both names as societies did not mean the University lacked intention to use the trade marks. The court further observed that there is no general rule requiring a trade mark proprietor to use the mark immediately upon filing or registration; the statutory framework does not impose such an immediate-use requirement as a matter of bad faith.
On the s 7(5) / Societies Act argument, the court treated this as a narrower issue that applied only to the first application mark. The PAR had rejected the Club’s case because it could not satisfy the two constituent elements under s 7(5). While the provided extract truncates the remainder of the PAR’s reasoning, the High Court’s overall approach indicates that the Club needed to show that use of the mark was prohibited in Singapore by written law or rule of law, and that the prohibition was sufficiently connected to the mark’s use as contemplated by the trade mark statute. The court concluded that the Club did not meet this threshold.
What Was the Outcome?
The High Court dismissed the appeal. It allowed both trade mark applications to proceed to registration, meaning the University could register “HARVARD CLUB OF SINGAPORE” and “HARVARD UNIVERSITY CLUB OF SINGAPORE” in Class 41 for club services (education or entertainment).
Practically, the decision confirms that where an organisation permits others to use its branding only as part of an affiliation or licensing arrangement, the goodwill may remain with the brand owner. It also underscores that opposition grounds such as bad faith and statutory prohibition require clear evidential and legal foundations.
Why Does This Case Matter?
This case is significant for practitioners because it clarifies how goodwill ownership is analysed in passing off-based opposition to trade mark registration. The court’s “implied licence” reasoning shows that goodwill may be attributed to the brand owner where the claimant’s use is conditional, permission-based, and subject to withdrawal. For brand owners and their affiliates, the decision highlights the importance of documenting the nature of permission and the conditions for continued use.
For trade mark applicants, the case also illustrates the evidential burden for alleging bad faith under s 7(6). The court was not persuaded by arguments that were speculative or unsupported by evidence. It also rejected the proposition that filing multiple marks simultaneously automatically indicates a lack of bona fide intention to use. This is useful for counsel advising on opposition strategy and on how to frame (and substantiate) claims of improper conduct.
For law students and litigators, the decision provides a structured example of how the High Court reviews a PAR’s findings on opposition grounds. It demonstrates that appellate intervention is unlikely where the lower tribunal’s reasoning is consistent with the statutory framework and supported by the factual record, particularly where the claimant’s rights depend on a relationship that has been terminated.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) — s 7(5); s 7(6); s 8(7)(a)
- Societies Act (Cap 311, 2014 Rev Ed) — s 4(3)(c)
- Trade Marks Ordinance
- Trade Marks Act 1938
Cases Cited
- [2007] SGHC 59
- [2010] SGCA 14
- [2018] SGHC 238
- [2019] SGHC 200
- [2019] SGIPOS 14
- [2020] SGHC 77
Source Documents
This article analyses [2020] SGHC 77 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.