Club fails to stop Harvard University in trademark spat

Things soured after Harvard University, through its Harvard Alumni Association office, suggested in 2014 that the club could benefit from a change of leadership which would entail the president stepping down.
Things soured after Harvard University, through its Harvard Alumni Association office, suggested in 2014 that the club could benefit from a change of leadership which would entail the president stepping down.PHOTO: AFP

Registrar says uni did not act in bad faith, with parties in licensor-licensee relationship

A trademark stand-off between Harvard University and its former alumni organisation here, the Harvard Club of Singapore, has bared how their 45-year-long relationship ended.

Things soured after the university, through its Harvard Alumni Association (HAA) office, suggested in 2014 that the club could benefit from a change of leadership which, among other things, would entail the president stepping down.

But there was no change and the incumbent president, Dr Irene Lee, was voted in to lead again in November 2014.

She first took office in November 2011, and had invested significant time and effort towards improving the administration and infrastructure of the club, and promoting the interests of Harvard alumni here.

HAA terminated its relationship with the club in May 2015, when the leadership issue was not resolved, and now recognises the Harvard University Alumni Association of Singapore as the official Harvard alumni club here.

These details emerged from a trademarks registrar's decision grounds released last week arising from Harvard University's bid to register two trademarks and the Singapore club's objections to the move.

The President and Fellows of Harvard College, which constitutes Harvard University, had sought to register "Harvard Club of Singapore" and "Harvard University Club of Singapore" under the Trade Marks Act in December 2014.

DECISION GROUNDS

What the applicant could give, it could also take away (or indeed give another). There was no usurpation or surrender of rights.

MR GABRIEL ONG SHENG LI, Principal Assistant Registrar of Trade Marks. The applicant, Harvard University, sought to register two trademarks in Singapore, which the Harvard Club of Singapore - formed in May 1969 and whose trademark licence lasted till May 29, 2015 - objected to. Mr Ong allowed the university's applications to proceed to registration.

The Singapore club objected, arguing it was an act of bad faith by the university against the club, as well as an attempt to pass off "goodwill" that had been built by the club over decades.

Both parties agreed before Mr Gabriel Ong Sheng Li, Principal Assistant Registrar of Trade Marks, that the applicant-university owned registrations for various trademarks in Singapore, including "Harvard", and that the goodwill attached to the Harvard name and mark also belonged to it.

But the club's lawyer, Mr Wun Rizwi, argued this did not mean it was entitled to the goodwill of all variations of trademarks that contained the name Harvard. He added the club owned the goodwill attached to its full name, based on its use of Harvard Club of Singapore since 1969, when it was registered as a society. This, among other things, justified its right to prevent others, including the applicant, from registering the mark.

But Harvard University, represented by lawyers Vithyashree and Jonathan Liang, countered that it ultimately owned all of this goodwill. They said that while each authorised Harvard Club may operate independently, each is a trademark licensee of the university.

The law is clear that the goodwill generated in connection with the licensed name or mark would belong to the licensor, they added.

Mr Ong agreed the parties were in a licensor-licensee relationship and the trademark licence spawned in May 1969 lasted till May 29, 2015.

He said this licence agreement gave the opponent the right to use the university's trademarks, including among other things "Harvard" and "Harvard Club".

Mr Ong made clear there was no evidence the university had any registered trademarks in Singapore in 1969, but this did not undermine his finding of a licensor-licensee relationship as the term "trademark licence" is wide enough to encompass common law rights as well.

He said the implied trademark licence granted by the university enabled the opponent to make use of "Harvard" and "Harvard Club" without being accused of "passing off". He found the club had no goodwill with which to support an action of passing off against the university.

 

He also found that the HAA had not acted in bad faith, disagreeing with the club's stance that the application was designed to pressure the president in 2014 to comply with the HAA's demands to step down, as well as interfere with the club's activities and usurp its role as a club for Harvard alumni in Singapore.

Mr Ong noted the club was not a commercial licensee. "What the applicant could give, it could also take away (or indeed give another). There was no usurpation or surrender of rights."

He allowed the university's applications to proceed to registration.

It is understood the club is considering an appeal against the decision.

A version of this article appeared in the print edition of The Straits Times on October 23, 2019, with the headline 'Club fails to stop Harvard University in trademark spat'. Print Edition | Subscribe