Harvard Club of Singapore v President and Fellows of Harvard College: Trade Mark Passing Off & Ownership Dispute

The Harvard Club of Singapore appealed against the decision of the Principal Assistant Registrar to allow the trade mark applications of the President and Fellows of Harvard College (Harvard University) for "HARVARD CLUB OF SINGAPORE" and "HARVARD UNIVERSITY CLUB OF SINGAPORE". The High Court, presided over by Chan Seng Onn J, dismissed the appeal, finding that the goodwill associated with the Harvard Club of Singapore belonged to Harvard University due to an implied license and the University's control over the club's operations. The court rejected the Club's claims of passing off, bad faith, and prohibited use under the Trade Marks Act.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding trade mark registration. The court dismissed the appeal, ruling the goodwill belongs to Harvard University, not the Harvard Club of Singapore.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Harvard Club of SingaporeAppellantAssociationAppeal DismissedLost
President and Fellows of Harvard CollegeRespondentCorporationAppeal DismissedWon

3. Judges

Judge NameTitleDelivered Judgment
Chan Seng OnnJudgeYes

4. Counsels

Counsel NameOrganization
Wun RizwiRHTLaw Asia LLP
Chew Lixian AshleyElla Cheong LLC

4. Facts

  1. Harvard Club of Singapore served Harvard alumni in Singapore for close to 50 years.
  2. Harvard Club of Singapore was registered as a society on 26 May 1969.
  3. The President and Fellows of Harvard College is the body corporate which constitutes Harvard University.
  4. The University terminated the relationship with the Club on 29 May 2015.
  5. The University applied to register the Application Marks on 24 December 2014.
  6. The University sought to register the name “HARVARD UNIVERSITY CLUB OF SINGAPORE” with the Registry of Societies but was refused registration.
  7. The University exerted control and supervision over the Club for four reasons.

5. Formal Citations

  1. Harvard Club of Singapore v President and Fellows of Harvard College, Tribunal Appeal No 22 of 2019, [2020] SGHC 77

6. Timeline

DateEvent
Harvard Club of Singapore registered as a society
HAA started to take steps to secure a change of leadership in the Club
Dr. Lee won a second term as president in the Club’s elections
University applied to register the Application Marks
Relationship between the Club and the University terminated
HARVARD UNIVERSITY ASSOCIATION OF ALUMNI IN SINGAPORE registered
Hearing date
Judgment reserved

7. Legal Issues

  1. Passing Off
    • Outcome: The court ruled that the Harvard Club of Singapore did not have sufficient goodwill to prevent the President and Fellows of Harvard College from registering the trade marks.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage
  2. Bad Faith
    • Outcome: The court ruled that the President and Fellows of Harvard College did not act in bad faith when applying for the trade marks.
    • Category: Substantive
  3. Use Prohibited by Law
    • Outcome: The court ruled that the registration of the trade marks was not prohibited by any written law or rule of law.
    • Category: Substantive
  4. Ownership of Goodwill
    • Outcome: The court held that the goodwill generated by the Harvard Club of Singapore belonged to the President and Fellows of Harvard College due to an implied license.
    • Category: Substantive
    • Sub-Issues:
      • Implied License
      • Licensor-Licensee Relationship

8. Remedies Sought

  1. Opposition to Trade Mark Registration

9. Cause of Actions

  • Passing Off
  • Trade Mark Infringement

10. Practice Areas

  • Trade Mark Litigation
  • Intellectual Property Litigation

11. Industries

  • Education

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Harvard Club of Singapore v President and Fellows of Harvard CollegeSingapore Intellectual Property OfficeYes[2019] SGIPOS 14SingaporeThe present appeal arises from the decision of the learned Principal Assistant Registrar (“the PAR”) in this case.
The Commissioners of Inland Revenue v Muller & Co’s Margarine, LimitedHouse of LordsYes[1901] AC 217United KingdomCited for the definition of goodwill as the benefit and advantage of the good name, reputation and connection of a business.
Novelty Pte Ltd v Amanresorts Ltd and anotherSingapore Court of AppealYes[2009] 3 SLR(R) 216SingaporeCited for the essential features of goodwill: association of a good, service or business with a particular source and this association is an attractive force which brings in custom.
The Singapore Professional Golfers’ Association v Chen Eng Waye and othersSingapore Court of AppealYes[2013] 2 SLR 495SingaporeCited for the principle that the protection of passing off can extend to non-commercial organizations.
Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading)Singapore High CourtYes[2016] 4 SLR 86SingaporeCited for the three classical elements of passing off: goodwill, misrepresentation, and damage.
Monster Energy Company v Glamco Co, LtdSingapore High CourtYes[2018] SGHC 238SingaporeCited for the applicable standard of review is that of a de novo hearing.
Ceramiche Caesar SpA v Caesarstone Sdot-Yam LtdSingapore Court of AppealYes[2017] 2 SLR 308SingaporeCited to mean that the appellate court is to hear the matter afresh with “no threshold requirement of general application that ‘a material error of fact or law’ … be shown before appellate intervention is warranted in such appeals.”
Harrods Limited v Harrodian School LimitedEngland and Wales Court of Appeal (Civil Division)Yes[1996] EWCA Civ 1315England and WalesCited to argue that a well-known organization does not have the right to lay claim to every variant that incorporates its name.
Weir Warman Ltd v Research & Development Pty LtdSingapore High CourtYes[2007] SGHC 59SingaporeCited for the principle that a trade mark licence arrangement between the plaintiff and the defendant may only be established if the plaintiff exerts some manner or form of control or supervision over the defendant’s goods.
Kickapoo (Malaysia) Sdn Bhd and another v The Monarch Beverage Co (Europe) LtdSingapore Court of AppealYes[2010] 1 SLR 1212SingaporeCited for the test that a trade mark licence arrangement between the plaintiff and the defendant may only be established if the plaintiff exerts some manner or form of control or supervision over the defendant’s goods.
Valentino Globe BV v Pacific Rim Industries IncSingapore Court of AppealYes[2010] SGCA 14SingaporeCited for the test that a trade mark licence arrangement between the plaintiff and the defendant may only be established if the plaintiff exerts some manner or form of control or supervision over the defendant’s goods.
QB Net Co Ltd v Earnson Management (S) Pte Ltd and othersSingapore High CourtYes[2007] 1 SLR(R) 1SingaporeCited for the principle that it would be unwise to rigidly adhere to the general rule that a licensee does not acquire goodwill in respect of the licensor’s business.
Harrods Ltd v Harrods (Buenos Aires) LtdUnknownYes[1999] F.S.R 187United KingdomCited for the principle that implied licences have been found to exist even in cases of unregistered marks.
CDL Hotels International Ltd v Pontiac Marina Pte LtdSingapore Court of AppealYes[1998] 1 SLR(R) 975SingaporeCited for the principle that the goodwill relevant in a passing off action is not in the mark, logo or get-up. It is the goodwill between a trader and his customers which is protected by this tort.
Villanova University v Villanova Alumni Educational Foundation, IncUnited States District Court, E.D. PennsylvaniaYes[2000] 123 F Supp 2d 293United StatesCited as a case involving similar facts where a group of alumni sought Villanova University’s permission to use its trade mark to form a club that conducted fundraising activities in support of the university’s sports programs.
Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co LtdSingapore High CourtYes[2009] 2 SLR(R) 814SingaporeCited for the principle that the presence of bad faith is determined by a combined test which contains both a subjective element (viz, what the particular applicant knows) and an objective element (viz, what ordinary people adopting proper standards would think).
Festina Lotus SA v Romanson Co LtdSingapore High CourtYes[2010] 4 SLR 552SingaporeCited for the principle that a finding of bad faith was largely, if not invariably, based on circumstantial evidence.
Scotch Whisky Association v Isetan MitsukoshiSingapore High CourtYes[2019] SGHC 200SingaporeCited for the principle that the word “use” relates to “actual use” in the trade mark sense and does not cover the mere registration of a society.

13. Applicable Rules

Rule Name
Order 87 r 4(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed)

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
Societies Act (Cap 311, 2014 Rev Ed)Singapore
s 8(7)(a) of the Trade Marks ActSingapore
s 7(6) of the Trade Marks ActSingapore
s 7(5) of the Trade Marks ActSingapore
s 4(3)(c) of the Societies ActSingapore
s 22(1)(a) of the Trade Marks ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade Mark
  • Passing Off
  • Goodwill
  • Implied Licence
  • Harvard Club
  • Harvard University
  • Trade Marks Act
  • Societies Act
  • HAA
  • Harvard Alumni Association

15.2 Keywords

  • trade mark
  • passing off
  • goodwill
  • Harvard
  • Singapore
  • alumni
  • club

17. Areas of Law

Area NameRelevance Score
Trademarks90
Passing Off90
Trade names70
Corporate Law10
Administrative Law5
Company Law5

16. Subjects

  • Intellectual Property
  • Trade Marks
  • Passing Off