Comments
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This decision provides welcome clarification on the scenarios that Section 7(5) of the Trade Marks Act is meant to address, and on the interplay between Section 4(3) of the Societies Act and Section 7(5) of the Trade Marks Act.
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Of particular note are Justice Chan Seng Onn’s observations as to why it would be against public policy to permit registration in the Register of Societies to block a trademark application on the trademark register.
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The Trade Marks Act and the Societies Act govern 2 distinct regimes that deal with different subject matters. To allow an opposition based on the Club’s argument would mean that trademark rights (which are legal property) can effectively be subordinated to the registration of a society name (which does not create any legal rights).
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Further, adopting this approach might preclude a trademark owner from using its own Singapore registered mark, if another entity manages to register a society under a similar or identical name. This is hardly ideal or fair.
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Finally, such an approach would pose practical difficulties. The Registrar of Trade Marks does not, and should not be expected to, conduct prior mark searches on the societies register before registering a mark (and vice versa).
In depth
Facts
The case concerns a tussle over the “Harvard” name between the Harvard Club of Singapore (“Club”), which until 2015 was recognized as the only official Harvard alumni club in Singapore, and the President and Fellows of Harvard College (the “University”), the body corporate which constitutes Harvard University.
This appeal to the High Court arose from the decision of the Principal Assistant Registrar in Harvard Club of Singapore v. President and Fellows of Harvard College [2019] SGIPOS 14 to dismiss the Club’s opposition to the University’s application to register the trademarks below (both for “Club Services [education or entertainment]” in Class 41):
(collectively, the “Application Marks”).
The Club opposition was mounted on the following grounds:
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Passing off under Section 8(7)(a) of the Trade Marks Act (for both Application Marks);
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Bad faith under Section 7(6) of the Trade Marks Act (for both Application Marks);
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In relation to the HCS Mark only, that use of the mark is prohibited in Singapore by written law or rule of law under Section 7(5) of the Trade Marks Act.
This alert will focus on the Club’s final ground of opposition under Section 7(5) of the Trade Marks Act, relating to the University’s application to register the HCS Mark in Class 41
Section 7(5) of the Trade Marks Act
The Club relied on Section 4(3)(c) of the Societies Act (Cap. 311) as the “written law or rule of law” under Section 7(5) of the Trade Marks Act prohibiting the use of the HCS Mark.
Section 4(3)(c) of the Societies Act provides that a Registrar may refuse to register a specified society if it appears to him that the name under which the specified society is to be registered is “likely to mislead members of the public as to the true character or purpose of the specified society or so nearly resembles the name of some other society as is likely to deceive the members of the public or members of either society” (“Deceptive Resemblance ground”), or is “identical to that of any other existing society” (“Identical Name ground”).
The University had earlier applied to register the name “Harvard University Club of Singapore” as a society under the Societies Act. However, the Registrar had already refused this application on the grounds that the University’s intended society name fell afoul of the Deceptive Resemblance ground under Section 4(3)(c)(i) of the Societies Act. The Club argued that:
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The Registrar of Societies has a discretion to refuse to register a society if it falls afoul of the Deceptive Resemblance or Identical Name grounds;
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The Registrar of Societies had already refused the University’s application to register a society on the basis that the name “Harvard University Club of Singapore” was caught by the Deceptive Resemblance ground;
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Assuming the University took steps to use the name “Harvard Club of Singapore”, the University would likely use one of the Application Marks as the name of a new Harvard Club. If the University did so, the Registrar of Societies would refuse to register the new society on the basis of the Identical Name ground because the Club was already registered under that name; and
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The Registrar’s decision would amount to a prohibition against the use of the HCS Mark under “any written law or rule of law” under Section 7(5) of the Trade Marks Act, such that the registration of the same name as a trademark must be refused
Decision
Justice Chan rejected the Club’s argument having regard to first principles, and held (among other things) that the Club’s grounds of opposition under Section 7(5) of the Trade Marks Act read with Section 4(3)(c) of the Societies Act failed.
He noted that the prohibition according to “written law or rule of law” under Section 7(5) of the Trade Marks Act was not meant to cover this situation, as:
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The phrase “written law” refers to an express prohibition in statute. The real targets of Section 7(5) are trademarks, the use of which is prohibited by legislation such as the Singapore Tourism Board Act (Cap. 305B) and the Geneva Conventions Act (Cap. 117).
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Section 4(3)(c)(i) of the Societies Act confers upon the Registrar of Societies a discretion to reject the registration of a society. A discretion, by definition, may or may not be exercised and cannot fall within the definition of “rule of law”.
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That said, even assuming the Registrar’s discretion to refuse registration amounts to prohibition by “rule of law”, the Club nonetheless could not succeed under Section 7(5) of the Trade Marks Act because the word “use” relates to “actual use” in the trademark sense, and does not cover mere registration of a society.
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