The Harvard Club of Singapore (opponent) was an official alumni club of Harvard University (formed by the president and fellows of Harvard College (applicant)) whose status was revoked by the applicant due to issues concerning leadership of the club. With the revocation, the applicant withdrew its consent to the opponent’s use of the names “Harvard” and “Harvard Club.”
The applicant applied for “HARVARD CLUB OF SINGAPORE” and “HARVARD UNIVERSITY CLUB OF SINGAPORE” (collectively, “application marks”). In light of the below grounds presented by the opponent, the application marks were allowed to proceed to registration after a decision issued by the Registrar on October 10, 2019.
Section 8(7)(a) of the Trade Marks Act: Passing Off
The opponent argued that: (1) owning the goodwill attached to “Harvard” did not give the applicant an entitlement to the goodwill for all variations of trademarks containing “Harvard”; (2) it owned the goodwill to “Harvard Club of Singapore” due to its long use; and (3) it thereby gave it the right to prevent anyone from registering the application marks.
The applicant counter-argued that it owned all the goodwill, and that each of its authorized alumni clubs was a trademark licensee.
The Registrar concluded that the applicant owned the goodwill in the name.
Since the opponent had no goodwill with which to sustain a passing-off action, the Registrar failed the opposition on the grounds of Section 8(7)(a) of the Trade Marks Act.
Section 7(6) of the Trade Marks Act: Bad Faith
The opponent argued that: (1) the application marks were filed without authority from the applicant; (2) the timing of the application marks, including an identical mark, was no coincidence and a pressure tactic, among others; and that (3) the applicant had no intention to use the application marks.
The Registrar rejected the first argument due to a lack of evidence from the opponent. Since the Registrar ascertained that the applicant owned the goodwill in the name, he found that it could file the trademarks at any time. Lastly, he noted that there was no requirement for immediate use of a registered mark.
Accordingly, the Registrar failed the opposition on this ground.
Section 7(5) of the Trade Marks Act, Read with Section 4(3)(c) of the Sedition Act: Use Prohibited by Law
The Registrar opined that the trademarks register and societies register are wholly separate regimes which did not intersect on this particular issue. The crucial element of Section 7(5) of the Trade Marks Act is “use,” and the registration of a society does not constitute actual use; therefore, Section 4(3)(c) of the Sedition Act is not applicable here.
The Registrar concluded that the opposition against “HARVARD CLUB OF SINGAPORE” failed on this ground as well.
By: Denise Mirandah
A version of this article first appeared in the INTA Bulletin Vol. 75, No. 3. For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx