Harvard Club of Singapore v President and Fellows of Harvard College

• Jurisdiction: Singapore
• Judge: Chan Seng Onn J
• Judgment Date: 20 April 2020
• Neutral Citation: [2020] SGHC 77
• Plaintiff Counsel: Wun Rizwi (RHTLaw Asia LLP)
• Docket Number: Tribunal Appeal No 22 of 2019
• Date: 20 April 2020
• Hearing Date: 14 February 2020
• Subject Matter: Ownership,Grounds for refusal of registration,Trade Marks and Trade Names,Passing off
• Year: 2020
• Defendant Counsel: Chew Lixian Ashley (Ella Cheong LLC)
• Court: High Court (Singapore)
• Citation: [2020] SGHC 77
• Published date: 24 April 2020

Chan Seng Onn J: Introduction

More than four centuries ago, William Shakespeare famously wrote:¹

What’s in a name? That which we call a rose

By any other name would smell as sweet;

As this case shows, the answer is quite a lot, especially for one as well-known as Harvard.

The present appeal arises from the decision of the learned Principal Assistant Registrar (“the PAR”) in Harvard Club of Singapore v President and Fellows of Harvard College [2019] SGIPOS 14 (“the GD”) where the PAR dismissed the appellant’s opposition to the respondent’s application to register two trade marks as tabulated below:

S/N	Trade marks	Registration no.	ICGS class and specification
1	HARVARD CLUB OF SINGAPORE	40201402804X	Class 41: Club Services [education or entertainment]
2	HARVARD UNIVERSITY CLUB OF SINGAPORE	40201402805W	Class 41: Club Services [education or entertainment]

For ease of reference, I will refer to the subject of trade mark application Nos. 40201402804X and 40201402805W as the first and second Application Mark respectively (collectively, “the Application Marks”).

After hearing both parties and considering their written submissions, I dismiss the appeal and allow both trade mark applications to proceed to registration. These are the reasons for my decision.

Facts

I begin with a summary of the basic facts, which are largely taken from the GD. More detailed discussion of the facts will be set out below where relevant.

The Parties

The appellant, Harvard Club of Singapore, has served the Harvard alumni in Singapore for close to 50 years. It was registered as a society on 26 May 1969² and up until 2015, it was recognised as the only official Harvard alumni club in Singapore with all the attendant benefits that followed. As the first Application Mark takes the same name as the appellant, I will refer to the appellant as “the Club” to avoid any confusion.

The respondent, President and Fellows of Harvard College (“the University”), is the body corporate which constitutes Harvard University.³ As one of the top ranking universities in the world, the strength of the “HARVARD” brand is such that Harvard University needs little introduction. Each academic year, students from more than 125 countries enrol in its courses, including more than a hundred students from Singapore.⁴

The international appeal of Harvard University is not restricted to its academic prowess. Indeed, as the PAR aptly puts it (GD at [3]):

Part of Harvard University’s attraction lies in the fact that some of the best and brightest pass through its halls. Graduates enjoy access to alumni networks through, among other things, various Harvard Clubs. Indeed, with very limited exceptions, only Harvard graduates may be a member of a Harvard Club. There are over 195 Harvard Clubs located throughout the world. They are supported by the Harvard Alumni Association, or “HAA”, an office within the University.

The Harvard Alumni Association (“HAA”) provides support and resources to official Harvard alumni clubs (“Harvard Clubs”) around the world. In particular, it operates two key websites: The Harvard Alumni website (http://alumni.harvard.edu/haa/clubs-sigs) which contains, inter alia, the HAA Club Requirements. These state that Harvard Clubs are required to satisfy certain fundamental criteria known as HAA Club Standards in order to retain their official affiliation with the University. For example, Harvard Clubs must submit a President’s Annual Report and an Officer Listing annually in order to “be in compliance with the HAA and to receive HAA services” such as website hosting, a post.harvard.edu club email forwarding address and invitations to the HAA’s annual Alumni Leadership Conference. The HAA Club Standards are also found in the current HAA Club Officer Handbook⁵ (“the Handbook”) which is intended to provide guidelines and resource information for starting a Harvard Club. There is evidence that such handbooks have been given to fledging Harvard Clubs as far back as 1969 (see [67] below).⁶ The Officers’ Lounge website (http://officerslounge.clubs.harvard.edu) which contains the fundamental operating guidelines under which the HAA expects Harvard Clubs to function (“the Guidelines”).⁷ Among other things, the Guidelines explicitly state that: A. The University grants Harvard Clubs permission to use the "Harvard Club" name. Harvard Clubs need to comply with policies set forth in … the Harvard Trademark Program's website at http://www.trademark.harvard.edu/ …

...

C. Harvard Club Presidents shall not serve more than three consecutive years. …

…

F. Non-compliance with HAA and University policies and standards may result in the Club's loss of the right to use the ‘Havard’ name. G. The HAA shall be notified promptly of any changes in the Club officers and directors …

[emphasis added]

The relationship between the Club and the University dates back to the first days of the Club’s founding in 1969. However, this came to an end on 29 May 2015, when the Executive Director of the HAA, Mr Philip Lovejoy, officially terminated the relationship between the Club and the University and revoked its status as an official Harvard Club. The official termination letter states that:⁸

The University is also withdrawing its consent for the Club to use the names "Harvard" and "Harvard Club”, the "VERITAS" shields, and all other University names and logos. This means that you must immediately stop any Club use of Harvard names and logos, and that any registration you have made of any Harvard name or logo for any such purpose must be cancelled immediately.

… the University reserves the right to recognize and appoint another club as the official Harvard alumni club in Singapore.

[emphasis added]

A brief background to the dispute

The official termination letter dated 29 May 2015 was the culmination of a year-long dispute that took place during Dr Lee Siew Mun Irene’s (“Dr Lee”) tenure as president of the Club. A detailed account of the facts pertaining to the dispute can be found at [6] – [9] of the GD.

For present purposes, it suffices to say that the dispute began in April 2014 when the HAA started to take steps to secure a change of leadership in the Club. Dr Lee resisted the HAA’s attempts and stood again for presidency in the Club’s November 2014 elections. She subsequently won a second term.

In the midst of the dispute, the University took steps to consolidate its position and applied to register the Application Marks on 24 December 2014.⁹ The Club mounted two opposition actions (later consolidated into one)¹⁰ in respect of the Application Marks and relied upon the following grounds under the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”) at the hearing before the PAR:

Ground of Opposition	Application Marks
TMA s 8(7)(a): Passing off	HARVARD CLUB OF SINGAPORE
HARVARD UNIVERSITY CLUB OF SINGAPORE
TMA s 7(6): Bad faith	HARVARD CLUB OF SINGAPORE
HARVARD UNIVERSITY CLUB OF SINGAPORE
TMA s 7(5) read with s 4(3)(c) of the Societies Act (“Societies Act”) (Cap 311, 2014 Rev Ed): Use prohibited in Singapore by written law or rule of law	HARVARD CLUB OF SINGAPORE

The University subsequently sought to register the name “HARVARD UNIVERSITY CLUB OF SINGAPORE” with the Registry of Societies¹¹ but was refused registration on the basis that the new society’s name was too similar to the existing registration of the Club. A group of the University’s alumni, with the full authorisation of the HAA, proceeded to register the Singapore branch of the new official Harvard Club under the name “HARVARD UNIVERSITY ASSOCIATION OF ALUMNI IN SINGAPORE” on 7 December 2015. I will refer to the new club as “HUAAS”.

The decision of the PAR

In his GD, the PAR dealt with a larger list of issues (both procedural and substantive) than is relevant for the purposes of this judgment. I will thus summarise his decisions only on the relevant grounds, namely the substantive grounds of opposition laid out at [13] above.

The PAR’s findings in relation to s 8(7)(a) of the TMA

The PAR dismissed the opposition under s 8(7)(a) of the TMA as he found that the goodwill generated by the Club in connection with its use of the Application Marks belongs to the University by virtue of an implied licence. In this regard, the Club was a “mere licensee” of the University, thereby allowing it to use the University’s trade marks including, inter alia, “HARVARD” and “HARVARD CLUB” (GD at [79] - [80]).

The PAR reasoned that the default position in law is that ownership of the goodwill remains with the University unless there was an agreement otherwise (GD at [83]). As there was no agreement for the goodwill to accrue to the Club, the Club did not enjoy the goodwill connected with the Application Marks. The first element of the tort of passing off was not made out and he thus rejected the Club’s opposition under s 8(7)(a) of the TMA (GD at [88] – [89]).

While the PAR’s remarks in relation to the tort of passing off were primarily addressed at “HARVARD CLUB OF SINGAPORE”, they should be read as pertaining also to “HARVARD UNIVERSITY CLUB OF SINGAPORE”, by virtue of the similarity in the names.

The PAR’s findings in relation to bad faith under s 7(6) of the TMA

The PAR rejected all the following three lines of argument that the Club raised as evidence of the University’s bad faith in registering the Application Marks under s 7(6) of the TMA: (1) that the Application Marks were filed by the HAA in the University’s name but without the University’s authority; (2) that there was dishonest, improper or some form of unacceptable conduct falling within the scope of bad faith; and (3) that the Applicant had filed for two trade marks at the same time without a bona fide intention to use them.

After...