Harvard University’s Trademark Battle with a Philippine Clothing Manufacturer

Who doesn’t know Harvard University? Personally, I admire anyone who graduated from Harvard. I look up to them as having extraordinary intelligence. When I hear “Harvard”, only two descriptions come to my mind: prestige and excellence. And when I hear Harvard, I associate it Harvard University.

But is it acceptable if the word "Harvard" is used by an entity other then Harvard University?

The Case:

The University, while world-famous, is keen on protecting its rights to the name “Harvard”. It registered the name in at least 50 countries around the globe including the Philippines where it was issued a Certificate of Trademark Registration on November 25, 1993.

However, even before Harvard University's registration in the Philippines, a domestic corporation is already using the mark "Harvard" for clothing articles.

New York Garments, the predecessor-in-interest of Fredco Manufacturing Corporation (Fredco) claimed the use of the mark "Harvard" in Philippine commerce since January 2, 1982. They obtained trademark registration on December 12, 1988, still, earlier than Harvard University.

Believing that it has a better right over the mark “Harvard”, Fredco filed with the Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO) a Petition for Cancellation of the Registration for the mark “Harvard Ve Ri Tas Shield Symbol” of Harvard University.

The Bureau of Legal Affairs granted Fredco’s petition and ordered the cancellation of registration for the trademark "Harvard Ve Ri Tas Shield Symbol" issued to Harvard University.

Harvard University appealed the decision with the Office of the Director General of the IPO. Harvard University won and secured a reversal of BLA’s decision.

Fredco didn’t give up and also appealed the case to the Court of Appeals (CA). The CA affirmed the decision of IPO Office of the Director General.

Fredco exhausted its remedies and went up to the Supreme Court.

Question:

Who has a better right to the mark “HARVARD” used for clothing in the Philippines? Fredco whose predecessor-in-interest first used and registered Harvard for clothing in the Philippines or Harvard University who is the known owner of the mark “Harvard”?

The Decision of the Philippine Supreme Court

Harvard University has a better right to the mark “Harvard” for the following reasons:

It is a well-known mark internationally and in the Philippines being one of the leading institutions of the world. “Harvard” is recognizable as the trade name and trademark of Harvard University of Cambridge, Massachusetts, USA. It has also established considerable goodwill since it was founded more than 350 years ago;

Being a well-known mark it is protected in the Philippines under Article 6bis of the Paris Convention even before its registration;

“Harvard” being a trade name of Harvard University is also protected under Article 8 of the Paris Convention which states that “A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”

The registration and use of the mark “Harvard” by Fredco falsely suggests a connection with Harvard University and should not have been allowed under Sec. 4 (a) of RA 166 which prohibits registration of a mark which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs x x x..

Fredco was not able to give a reasonable explanation on why its logo consists of the word “Harvard” with the terms “Cambridge, Massachusetts”, “established 1936” and “USA” when it has no affiliation with “Harvard”, or with Cambridge, Massachusetts, and was not also established in 1936. The use of those phrases therefore suggests that it’s riding on the popularity and goodwill of Harvard University without the latter’s consent.

Personal Notes:

The case has been decided using RA 166 or the old Trademark Act of Philippines but the same provisions are also found on RA 8293 or the Intellectual Property Code, namely:

The provision of false suggestion of a connection with an institution is on Sec. 123.1 (a) which stated that: A mark may not be registered if it “consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.

RA 8293 now has Sec. 123.1 (e) which is a provision for well-known marks similar to Article 6bis of the Paris Convention, and

Sec. 165.2 (a) which states that “notwithstanding any laws or regulations providing for obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.

Final Note:

The registration of trademarks in the Philippines now follows the “first to file rule” but the rule is not absolute. As stated by the IPO Director General in its ruling “ the right to register a trademark is based on ownership and when the applicant is not the owner, he has no right to register the mark.”

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Full text of the case can be accessed HERE.

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