Harvard University Loses Trade Mark Opposition Against Australian Law Firm

When Harvard University — one of the most powerful academic institutions on the planet — fires its legal cannon at a small Australian law firm, you'd be forgiven for assuming the outcome is a foregone conclusion. You'd be wrong.

In a decision handed down on 6 February 2025, a Delegate of the Registrar of Trade Marks dismissed every single ground of opposition filed by The President and Fellows of Harvard College against the registration of the trade mark HARVARD LEGAL by Harvard Legal Pty Ltd. All four grounds failed. Costs were awarded against Harvard University. The trade mark proceeded to registration.

Stellar Law Pty Ltd acted for the successful applicant, instructing Anthony Franklin SC at the oral hearing.

Background: The Mark, the Applicant, and the Opponent

On 21 December 2021, Harvard Legal Pty Ltd filed an application to register HARVARD LEGAL in Class 45, covering legal services of all kinds — advice, advocacy, consultancy, document preparation, mediation, research, conveyancing, and more. The application was accepted by IP Australia and advertised for opposition in May 2022.

Harvard University wasted no time. Within weeks, it filed a Notice of Intention to Oppose. The grounds pressed were sections 42(b), 43, 60, and 62A of the Trade Marks Act 1995 (Cth) — a formidable volley covering reputation-based confusion, connotation, contrary-to-law conduct, and bad faith.

What followed was a multi-year evidentiary battle, culminating in an oral hearing on 7 November 2024.

Harvard's Evidence: Impressive, But Not Enough

Harvard University put its best foot forward. The evidence in support included detailed financial reports showing annual revenue of US $5.2 billion, decades of university ranking data consistently placing Harvard at number one globally, evidence of the Harvard Alumni Association in Australia (with 606 members as of 2019), a student exchange program with Sydney Law School, and the prestigious Frank Knox Memorial Fellowship for Australian students to study at Harvard.

The evidence was, by any measure, extraordinary. But evidence of reputation and evidence of likely confusion in the relevant market are two different things entirely.

Why Each Ground Failed

Section 60 — Reputation

The Delegate accepted that Harvard University had established a reputation in Australia in the word HARVARD. That finding was not in dispute.

What the Delegate was not satisfied of was the causal link required under s 60(b): that because of Harvard's reputation, use of HARVARD LEGAL for legal services would be likely to deceive or cause confusion.

The Delegate found that Harvard's reputation was anchored firmly in the provision of higher education. There was no evidence that Australian consumers would infer, upon encountering a Sydney law firm called Harvard Legal, that the firm was sponsored by, affiliated with, or otherwise connected to Harvard University. The market for tertiary education and the market for legal services in Australia are, as the Delegate put it, simply too far apart.

Section 42(b) — Contrary to Law

Having found that the s 60 ground failed, the s 42(b) ground based on the Australian Consumer Law fell with it. The test under the ACL (would the use of the mark be likely to mislead or deceive?) is stricter than the s 60 test. If Harvard couldn't clear the lower bar, it couldn't clear the higher one.

Section 43 — Connotation

Section 43 operates differently from s 60 — it focuses on the inherent meaning or connotation of the mark itself, not on the reputation of a competing mark. Harvard argued that HARVARD connoted sponsorship, endorsement, or affiliation with Harvard University.

The Delegate acknowledged that the case law in this area is unsettled and somewhat tortured. But on the evidence, Harvard University's mark had not reached the standard of notoriety that s 43 requires — a level of fame that transcends mere reputation. Harvard's evidence demonstrated reputation in education. It did not demonstrate that the name HARVARD was so iconic and ubiquitous in Australia that consumers encountering it on a law firm shingle would automatically assume a connection to the university.

Section 62A — Bad Faith

This was perhaps the most colourful ground. Harvard University questioned whether the applicant's sole director — a person named "John Harvard" — was actually named John Harvard at birth, or whether the name was adopted to give the application an air of legitimacy. Evidence from a private investigator was filed, concluding that no person named John Harvard appeared to reside at the listed address at the relevant time.

The Delegate found this ultimately irrelevant. Even accepting Harvard University's suspicions, the test for bad faith requires something more than awareness of another mark. The Applicant was applying for a mark covering legal services — a field in which Harvard University had no Australian trade mark registration and no objectively demonstrable intention to expand. There was nothing unscrupulous, underhand, or unconscientious about the application when assessed against proper commercial standards.

Bad faith was not established.

Practical Takeaways for Brand Owners

• Reputation in one field does not automatically protect you in another. Even a mark as famous as HARVARD can fail to establish a likelihood of confusion when the goods and services are far removed from the reputation's core. The strength of a mark matters — but so does the nature of the market.

• Section 43 requires more than reputation. To succeed on a connotation ground, an opponent must demonstrate a level of notoriety that goes beyond mere recognition. If your case is fundamentally about reputation, s 60 is the right vehicle.

• Bad faith is a serious allegation with a high bar. Awareness of a competitor's mark at the time of filing — even awareness by a lawyer who ought to know better — is not enough on its own. The conduct must fall short of acceptable commercial standards viewed objectively.

• Filing a Notice of Opposition is not the end of the story. A well-resourced opponent with global brand recognition can still lose if the evidence and the law are not on their side. Every opposition turns on its own facts.

The Bigger Picture

This decision is a reminder that trade mark law in Australia operates on principles, not prestige. The fact that Harvard University is one of the most recognised institutions in human history did not entitle it to prevent an unrelated Australian law firm from using the word HARVARD in its name.

The Applicant demonstrated that the Australian marketplace already accommodates law firms and other businesses that share names with universities — Griffith Legal, Macquarie Lawyers, Bond Lawyers — without consumers assuming an institutional connection. That argument, combined with the genuine distinctiveness of HARVARD LEGAL as a mark for legal services, carried the day.

Costs were awarded against Harvard University. The trade mark will proceed to registration.

Citation: The President and Fellows of Harvard College v Harvard Legal Pty Ltd [2025] ATMO 25 (6 February 2025). Applicant represented by Anthony Franklin SC, instructed by Stellar Law Pty Ltd.

If you are facing a trade mark opposition — whether as opponent or applicant — contact Stellar Law for expert advice on your options.