Bosch Corp v Wiedson International: Trademark Infringement, Striking Out Defence

In Bosch Corp (Japan) v Wiedson International (S) Pte Ltd, the High Court of Singapore addressed Registrar's Appeals arising from a trademark infringement suit. The plaintiff, Bosch Corp, alleged trademark infringement and conspiracy against the defendants, Wiedson International and others. The court struck out the defendants' defence, finding it disclosed no reasonable defence and was frivolous, vexatious, and an abuse of process. However, the court dismissed the plaintiff's appeal to strike out the defendants' counterclaim. The court dismissed the appeal by the defendants in part and allowed in part.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeal by the defendants is dismissed in part and allowed in part.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding trademark infringement. The court struck out the defendant's defence and counterclaim, finding it frivolous and an abuse of process.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
OthersDefendantCorporationDefence struck outLost
Wiedson International (S) Pte LtdDefendantCorporationDefence struck outLost
Bosch Corp (Japan)PlaintiffCorporationAppeal dismissed in partPartial

3. Judges

Judge NameTitleDelivered Judgment
Tay Yong KwangJudgeYes

4. Counsels

Counsel NameOrganization
Gopinath S/O PillaiTan Jin Hwee LLC
Tan Kian Hong AloysiusTan Jin Hwee LLC
Florence BokGateway Law Corporation
David WuGateway Law Corporation

4. Facts

  1. Plaintiff received information about alleged trading in counterfeit goods.
  2. Plaintiff engaged private investigators to investigate the 1st defendant's premises.
  3. A raid was conducted at the premises by the Intellectual Property Rights Branch.
  4. Goods suspected to be infringing the plaintiff's trademarks were seized.
  5. Defendants pleaded guilty to amended charges in criminal proceedings.
  6. Defendants did not sign the proposed settlement agreement after the criminal proceedings.
  7. The seized goods were contained in packing material that bore the infringing signs.

5. Formal Citations

  1. Bosch Corp (Japan) v Wiedson International (S) Pte Ltd and others and another suit, Suit No 845 of 2006, [2013] SGHC 47

6. Timeline

DateEvent
Plaintiff engaged private investigators to investigate the 1st defendant's premises.
Complaint was lodged before a magistrate.
Search warrants were issued and a raid was conducted at the premises by the Intellectual Property Rights Branch.
Plaintiff commenced action for alleged trademark infringement and instituted criminal proceedings.
Parties struck a deal under which the defendants agreed to enter into a settlement agreement.
Plaintiff withdrew most of the charges and the two remaining charges were amended before the District Court.
Defendants objected to the High Court making an order in criminal revision proceedings that the seized goods be preserved and not be destroyed.
Defendants filed defence and counterclaim.
Decision Date

7. Legal Issues

  1. Trademark Infringement
    • Outcome: The court found that the defendant's actions constituted trademark infringement.
    • Category: Substantive
    • Sub-Issues:
      • Use of identical or similar signs
      • Parallel imports
      • Likelihood of confusion
    • Related Cases:
      • [2003] 4 SLR(R) 755
  2. Striking Out Defence
    • Outcome: The court struck out the defendant's defence on the grounds that it disclosed no reasonable defence and was frivolous, vexatious, and an abuse of process.
    • Category: Procedural
    • Sub-Issues:
      • No reasonable defence
      • Frivolous or vexatious proceedings
      • Abuse of process of the court
    • Related Cases:
      • [2006] 1 SLR(R) 582
  3. Liability of Directors
    • Outcome: The court found the 2nd and 3rd defendants liable as they consented to the 1st defendant's actions.
    • Category: Substantive
    • Sub-Issues:
      • Joint tortfeasors
      • Authorization, direction, or procurement of wrong
    • Related Cases:
      • [2004] 3 SLR(R) 543
      • [1997] 3 SLR(R) 649

8. Remedies Sought

  1. Damages for Trademark Infringement
  2. Injunctive Relief

9. Cause of Actions

  • Trademark Infringement
  • Tort of Conspiracy
  • Joint Tortfeasorship

10. Practice Areas

  • Trademark Infringement
  • Commercial Litigation

11. Industries

  • Manufacturing
  • Automotive

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Pan-West (Pte) Ltd v Grand Bigwin Pte LtdHigh CourtYes[2003] 4 SLR(R) 755SingaporeCited for the 'exhaustion of rights defence' applicable to parallel imports under s 29 TMA.
Chee Siok Chin and others v Minister of Home Affairs and anotherHigh CourtYes[2006] 1 SLR(R) 582SingaporeCited for the definitions of frivolous and vexatious proceedings, and abuse of process.
TV Media Pte Ltd v De Cruz Andrea Heidi and anotherCourt of AppealYes[2004] 3 SLR(R) 543SingaporeCited regarding the liability of directors as joint tortfeasors for acts of the company.
Gabriel Peter & Partners v Wee Chong JinHigh CourtYes[1997] 3 SLR(R) 649SingaporeCited regarding the level of involvement of a director in a tort committed by the company.

13. Applicable Rules

Rule Name
O 18 r 19 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed)

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed)Singapore
s 27(1) Trade Marks ActSingapore
s 27(2) Trade Marks ActSingapore
s 28 Trade Marks ActSingapore
s 29 Trade Marks ActSingapore
s 49 Trade Marks ActSingapore
s 49(c) Trade Marks ActSingapore
s 107(4) Trade Marks ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trademark
  • Infringement
  • Counterfeit Goods
  • Parallel Imports
  • Settlement Agreement
  • Mitigation Plea
  • Exhaustion of Rights
  • Frivolous
  • Vexatious
  • Abuse of Process

15.2 Keywords

  • trademark infringement
  • counterfeit goods
  • parallel imports
  • striking out
  • defence
  • abuse of process

17. Areas of Law

Area NameRelevance Score
Trademarks90
Trademark Infringement85
Conspiracy by Unlawful Means70
Fraud and Deceit60
Civil Litigation50
Parallel Import40
Contract Law30

16. Subjects

  • Intellectual Property
  • Trademark Law
  • Civil Procedure