Dr. Who Waterworks v. Dr. Who (M) Sdn Bhd: Trademark Infringement & Passing Off Dispute

In Dr. Who Waterworks Pte Ltd and others v. Dr. Who (M) Sdn Bhd and others, the General Division of the High Court of Singapore heard a case involving claims of trademark infringement, passing off, breach of contract, conspiracy, and detinue. The plaintiffs, Dr. Who Waterworks Pte Ltd, Dr. Who Global Watertech (S) Pte Ltd, and Dr. Who Laboratories (S) Pte Ltd, sued the defendants, Dr. Who (M) Sdn Bhd, Oo Tim Wee, Low Siew Eng, and Dynamic Watermedia Pte Ltd, for intellectual property violations and other torts. The defendants counterclaimed for breach of contract, conspiracy, and wrongful interference with business. The court found in favor of the plaintiffs on the trademark infringement and passing off claims, dismissing the remaining claims and most of the counterclaims, except for a debt owed by the second plaintiff to the first defendant.

1. Case Overview

1.1 Court

General Division of the High Court

1.2 Outcome

Judgment for Plaintiffs on trademark infringement and passing off claims; Counterclaims dismissed except for debt owed to First Defendant.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Singapore court case involving trademark infringement and passing off claims related to the 'Dr. Who' brand in the bottled water industry.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Dr. Who Waterworks Pte Ltd (formerly known as Cana Services Pte Ltd)Plaintiff, Defendant in CounterclaimCorporationSuccessful on trademark infringement and passing off claimsPartial
Dr. Who Global Watertech (S) Pte LtdPlaintiff, Defendant in CounterclaimCorporationSuccessful on trademark infringement and passing off claimsPartial
Dr. Who Laboratories (S) Pte Ltd (formerly known as New Global Fluid Engineering & Machinery Pte Ltd)Plaintiff, Defendant in CounterclaimCorporationSuccessful on trademark infringement and passing off claimsPartial
Dr. Who (M) Sdn BhdDefendant, Plaintiff in CounterclaimCorporationUnsuccessful on most counterclaimsLost
Oo Tim WeeDefendant, Plaintiff in CounterclaimIndividualUnsuccessful on counterclaimsLost
Low Siew EngDefendant, Plaintiff in CounterclaimIndividualUnsuccessful on counterclaimsLost
Dynamic Watermedia Pte Ltd (formerly known as Dr. Who (S) Pte Ltd)Defendant, Plaintiff in CounterclaimCorporationUnsuccessful on counterclaimsLost
Koh Tiong Gee (Xu Zhongyi)Defendant in CounterclaimIndividualSuccessful in defending against counterclaimsWon
Tan Kim PengDefendant in CounterclaimIndividualSuccessful in defending against counterclaimsWon

3. Judges

Judge NameTitleDelivered Judgment
Dedar Singh GillJudge of the High CourtYes

4. Counsels

Counsel NameOrganization
Rakesh s/o Pokkan VasuGomez & Vasu LLC
Winnifred GomezGomez & Vasu LLC
Farhan TyeballyGomez & Vasu LLC
Anand s/o K ThiagarajanAKT Legal Chambers

4. Facts

  1. Plaintiffs and Defendants were previously in a commercial relationship involving the 'Dr. Who' brand.
  2. Plaintiffs are Singapore companies involved in the bottled water business.
  3. Defendants are Malaysian companies also involved in the bottled water business.
  4. A Deed of Settlement was signed to divide business operations between Singapore and Malaysia.
  5. Defendants used the 'Dr. Who' mark and related signs in Singapore after the Deed.
  6. Plaintiffs claimed trademark infringement and passing off due to the Defendants' actions.
  7. Defendants counterclaimed for breach of contract and unlawful interference with business.

5. Formal Citations

  1. Dr Who Waterworks Pte Ltd and others v Dr Who (M) Sdn Bhd and others, Suit No 600 of 2020 (consolidated with Suit No 96 of 2021), [2023] SGHC 156

6. Timeline

DateEvent
Dr. Who Waterworks Pte Ltd (formerly known as Cana Services Pte Ltd) incorporated.
Cana Services Pte Ltd changed name to Dr. Who Waterworks Pte Ltd.
Dr. Who Waterworks Pte Ltd expanded business to include provision of bottled water with label design and personalised branding.
Mr. Koh appointed a director of the first plaintiff.
Mr. Koh acquired a majority shareholding in the first plaintiff.
Mr. Chan exited the first plaintiff, leaving Mr. Oo and Mr. Koh as equal shareholders.
Dr. Who Waterworks Pte Ltd registered the mark “DR. WHO” in Singapore.
Dr. Who (M) Sdn Bhd incorporated in Malaysia.
Trade mark registered in Malaysia in Mr. Oo’s name.
Dr. Who Global Watertech (S) Pte Ltd incorporated by Mr. Koh.
Dr. Who Laboratories (S) Pte Ltd incorporated by Mr. Koh.
Trade mark registered in the first plaintiff’s name in Singapore.
The Kohs initiated a suit against the Oos in Malaysia.
Mr. Oo registered in Malaysia a mark containing the words “DR. WHO” with the quatrefoil-water droplet design element affixed at the top-right hand corner.
Settlement reached regarding the First Malaysian Suit and recorded the terms of their agreement in a deed of settlement.
Mr. Oo registered in Malaysia two marks that comprised the words “DR. WHO” in Classes 16 and 35 respectively.
The fourth defendant, Dr. Who (S) Pte Ltd, was incorporated in Singapore by the second and third defendants.
The fourth defendant’s name was changed from “DR. WHO (S) Pte Ltd” to “Dynamic Watermedia Pte Ltd”.
First defendant supplied bottled water to the second plaintiff from January to May 2020.
The plaintiffs commenced the present proceedings.
The plaintiffs were granted the order HC/ORC 3678/2020.
IKEA proceeded to suspend deliveries from the first defendant.
The fourth defendant received a letter from ACRA directing the fourth defendant to change its name.
The plaintiffs sought leave to apply for an order of committal against the Oos for alleged breaches of the Interim Injunction in HC/SUM 3410/2020.
The defendants commenced legal proceedings against the first plaintiff and its manufacturers as listed at [35] above (“the Second Malaysian Suit”).
The defendants entered their appearance in the present suit.
The plaintiffs were granted leave in SUM 3410.
The plaintiffs filed HC/SUM 3602/2020.
The defendants proceeded to file their defence and counterclaim.
The defendants also filed HC/SUM 3928/2020.
A variation of the Interim Injunction (“the Variation Order”) was also ordered on 1 February 2021.
The plaintiffs filed HC/SUM 1182/2021.
Leave was granted on 23 March 2021, and the plaintiffs filed HC/SUM 1827/2021 (“SUM 1827”) seeking a committal order against the second and third defendants.
SUM 1827 was heard and dismissed.
Hearing.
Hearing.
Judgment reserved.

7. Legal Issues

  1. Trademark Infringement
    • Outcome: The court found that the defendants infringed the plaintiffs' trademarks through the use of similar signs on vehicles, websites, and products.
    • Category: Substantive
    • Sub-Issues:
      • Use of identical or similar signs
      • Likelihood of confusion
      • Use in the course of trade
      • Use in Singapore
  2. Passing Off
    • Outcome: The court found that the defendants committed the tort of passing off by misrepresenting their goods and business as being associated with the plaintiffs, leading to a likelihood of confusion and damage to the plaintiffs' goodwill.
    • Category: Substantive
    • Sub-Issues:
      • Goodwill
      • Misrepresentation
      • Damage to goodwill
      • Likelihood of confusion
  3. Breach of Contract
    • Outcome: The court found that the defendants breached the Deed of Settlement by supplying bottled water in Singapore in a manner that constituted passing off.
    • Category: Substantive
    • Sub-Issues:
      • Interpretation of contract terms
      • Scope of restrictive covenants
      • Supply of goods in violation of agreement
  4. Unlawful Conspiracy to Injure
    • Outcome: The court did not make a determination on this issue, as the plaintiffs had not established any distinct loss beyond that claimed for their passing off action.
    • Category: Substantive
    • Sub-Issues:
      • Agreement to commit unlawful acts
      • Intention to cause damage
      • Causation of loss
  5. Detinue
    • Outcome: The court found that the plaintiffs had not established that the defendants had wrongfully detained the labels or that they had suffered any loss as a result.
    • Category: Substantive
    • Sub-Issues:
      • Right to immediate possession
      • Wrongful detention of goods
      • Refusal to return goods upon demand

8. Remedies Sought

  1. Injunction
  2. Delivery up of infringing products
  3. Inquiry as to damages
  4. Account of profits
  5. Statutory damages

9. Cause of Actions

  • Trademark Infringement
  • Passing Off
  • Breach of Contract
  • Conspiracy
  • Detinue

10. Practice Areas

  • Intellectual Property Litigation
  • Commercial Litigation

11. Industries

  • Food and Beverage
  • Water Bottling

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpAHigh CourtYes[2013] 1 SLR 531SingaporeCited for the principle of comparing the actual goods or services with the specifications of the trade mark.
Burberry Ltd v Megastar Shipping Pte Ltd and anorHigh CourtYes[2019] 1 SLR 536SingaporeCited for the requirement of trade mark use concerning how the sign interacts with and is represented on goods.
City Chain Stores (S) Pte Ltd v Louis Vuitton MalletierHigh CourtYes[2010] 1 SLR 382SingaporeCited for the principle that the comparison is made between the mark as registered and the sign.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and anorHigh CourtYes[2014] 1 SLR 911SingaporeCited for the principle that the distinctiveness of a mark plays an integral role in the marks-similarity inquiry.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appealCourt of AppealYes[2013] 2 SLR 941SingaporeCited for the aspects of similarity: visual, aural and conceptual similarity.
Calvin Klein, Inc and anor v HS International Pte Ltd and othersHigh CourtYes[2016] 5 SLR 1183SingaporeCited for the viewpoint of the average consumer who would exercise some care and a measure of good sense in making his or her purchases.
800-FLOWERS Trade MarkN/ANo800-FLOWERS Trade Mark [2000] FSR 697England and WalesCited for the principle that the mere fact that websites can be accessed anywhere in the world does not mean that the law should regard them as being used everywhere in the world.
Novelty Pte Ltd v Amanresorts Ltd and anotherCourt of AppealYes[2009] 3 SLR(R) 216SingaporeCited for the principle that evidence of the existence of the websites featuring allegedly infringing signs or mere access of the websites by consumers in Singapore will be insufficient to show that consumers in Singapore have been targeted by the websites.
Digi International v Teraoka Seiko Co, LtdHigh CourtYes[2021] SGHC 165SingaporeCited for the relevant public comprises the actual or potential purchasers of the goods in question, and those who deal with these goods.
Nation Fittings (M) Sdn Bhd v Oystertec plc and another suitHigh CourtYes[2006] 1 SLR(R) 712SingaporeCited for the inherent function of trade marks is to bring consumers home to the source of the goods or services in question.
Richemont International SA v Da Vinci Collections Pte LtdHigh CourtYes[2006] 4 SLR(R) 369SingaporeCited for the principle that secondary or even third-level product identifiers can function as trade marks if they indicate to the consumer that the product in question originates from a particular undertaking.
Singsung Pte Ltd v LG Electronics Pte Ltd (trading as L S Electrical Trading)High CourtYes[2016] 4 SLR 86SingaporeCited for the elements to establish an action under the tort of passing off.
Tuitiongenius Pte Ltd v Toh Yew KeatHigh CourtYes[2021] 1 SLR 231SingaporeCited for the principle that goodwill in a passing off action is not concerned specifically with the mark used by the trader, rather, it is concerned with the trader’s business as a whole.
The Singapore Professional Golfers’ Association v Chen Eng Waye and othersHigh CourtYes[2013] 2 SLR 495SingaporeCited for the misrepresentation that the goods, services or business of the defendant are those of the plaintiff or closely connected with the plaintiff.
CDL Hotels International Ltd v Pontiac Marina Pte LtdHigh CourtYes[1998] 1 SLR(R) 975SingaporeCited for the tort of passing off seeks to protect the goodwill of the plaintiff’s business as a whole, rather than an invasion of the mark(s) used.
The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte LtdHigh CourtYes[2016] 3 SLR 517SingaporeCited for the definition of goodwill as the power of attraction which draws customers to buy the trader’s goods.
PH Hydraulics & Engineering Pte Ltd v Airtrust (Hong Kong) Ltd and anorCourt of AppealYes[2017] 2 SLR 129SingaporeCited for the differences in rationale behind an award of damages for the breach of a contract and the commission of a tort.
Lim Teck Cheng v Wyno Marine Pte LtdHigh CourtYes[1999] 3 SLR(R) 543SingaporeCited for the principle that where the law affords a plaintiff multiple (cumulative) remedies in respect of the same conduct of a defendant, the plaintiff cannot pursue any other remedy after he has fully recouped his loss.
EFT Holdings Inc and anor v Marinteknik Shipbuilders (S) Pte Ltd and anorHigh CourtYes[2014] 1 SLR 860SingaporeCited for the elements to succeed in a claim for unlawful conspiracy.
Simgood Pte Ltd v MLC Shipbuilding Sdn Bhd and othersHigh CourtYes[2016] 1 SLR 1129SingaporeCited for the claim lies at the suit of the person who has a right to immediate possession of goods against a person who is in possession of the goods and who, upon proper demand and without lawful excuse, fails or refuses to deliver them up.
Paragon Shipping Pte Ltd v Freight Connect (S) Pte LtdHigh CourtYes[2014] 4 SLR 574SingaporeCited for the elements to establish the tort of wrongful interference with trade.
Xia Zhengyan v Geng ChangqingHigh CourtNo[2015] 3 SLR 732SingaporeCited for the principle that one’s prospects of success will not always increase in proportion to the number of claims or allegations that one makes.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Companies Act (Cap 50, 2006 Rev Ed)Singapore
Trade Marks ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • DR. WHO
  • Trademark
  • Passing Off
  • Deed of Settlement
  • Bottled Water
  • Infringement
  • Goodwill
  • Misrepresentation
  • Likelihood of Confusion
  • Commercial Vehicles
  • Websites
  • Cartons
  • Labels

15.2 Keywords

  • trademark infringement
  • passing off
  • Singapore
  • bottled water
  • Dr. Who
  • intellectual property
  • contract dispute

17. Areas of Law

Area NameRelevance Score
Trademarks90
Intellectual Property Law85
Passing Off80
Infringement80
Trade names75
Breach of Contract70
Contract Law65
Torts60
Conspiracy55
Commercial Disputes50
Detinue45
Civil Litigation40

16. Subjects

  • Intellectual Property
  • Trade Marks
  • Contract
  • Torts
  • Commercial Dispute