– Bad faith & passing off claims –
Alumni club Harvard Club of Singapore was unsuccessful in preventing Harvard University from registering two trademarks in Singapore, namely the ‘Harvard Club of Singapore’ and ‘Harvard University Club of Singapore’. In a decision dated 11 October 2019 the Registrar (HMD, IPOS) rejected the alumni club’s arguments that the university could not register two trademarks. The club based its opposition on the grounds that the club’s goodwill attached to Harvard Club of Singapore would be damaged if either mark was allowed to proceed to registration and that both trade marks were applied by the university in bad faith.
The Harvard Club of Singapore was previously recognized by the university as the official Harvard club in Singapore. However, in 2015, the university terminated its relationship with the club and revoked its status as a recognised Harvard alumni club. On the evidence, the parties were in a trade mark licensor-licensee relationship between May 1969 to May 2015. Although there was no formal signed agreement, the Registrar found the existence of an implied licence agreement based on objective assessment of the facts of the case and the conduct of the parties. It was by virtue of implied licence that the club was given the right to use the university’s trade marks (including “Harvard” and “Harvard Club”). Further, the club had previously acted in a manner consistent with that of a licensee when it sought the university’s assistance in enforcing the ‘Harvard’ trademarks against an unauthorised alumni body.
The law on ownership of goodwill in licensor-licensee situations is that absent any agreement to the contrary, the licensor or franchisor is the owner of the goodwill. On the facts, the whole point of the trade mark relationship was to license the use of “Harvard” or “Harvard Club” to the club so that its use would not amount to passing off. There was no evidence of an agreement that the goodwill attaching to “Harvard Club of Singapore” would belong to the club. Therefore, the university owned the goodwill and the ground of passing off did not succeed. In light of the fact that there was a licensing relationship between the parties, and that Harvard University owns all of the relevant goodwill, it was clear that it was well within Harvard University’s right to file for the Application Marks at any point of time it deemed fit. Consequently, even though the university had filed for the Application Marks prior to termination in 2015, this did not amount to bad faith.
Read the full decision here.