DR. WHO WATERWORKS PTE. LTD. & 2 Ors v DR. WHO (M) SDN. BHD. & 3 Ors

Facts

The plaintiffs were three Singapore companies in the Dr. Who group, run by Mr Koh Tiong Gee and his wife Mdm Tan Kim Peng, which supplied bottled water. The first plaintiff registered the DR. WHO word marks in Singapore in 2004 for bottled and drinking water (Class 32) and for water delivery and supply services (Class 39), and in 2012 a DR. WHO mark with a quatrefoil of water droplets for water treatment (Classes 11 and 40). The first defendant, Dr. Who (M) Sdn Bhd, was incorporated in Malaysia in 2007 by Mr Oo Tim Wee, the second defendant; his wife Mdm Low Siew Eng is the third defendant, and Mr Koh, Mdm Tan and the first plaintiff were among the first defendant's initial shareholders.

After the relationship broke down, the two families settled a Malaysian suit by a deed dated 13 February 2017. Clause 2.3 gave the Koh side the DR. WHO mark in Singapore and the Oo side the mark in Malaysia, and barred each side from supplying bottled water in the other's country bearing the other's registered DR. WHO mark or by way of passing off. In 2019 the Oos incorporated Dr. Who (S) Pte Ltd in Singapore, later renamed Dynamic Watermedia Pte Ltd. The plaintiffs complained that a Malaysian truck seen in Singapore bore a DR. WHO droplet sign and the first defendant's Malaysian web address, that cartons of water sold at two IKEA stores carried the drwho.asia address in the distributor details, and that the defendants' websites, Facebook page and the Singapore company name used DR. WHO. They sued in Suit No 600 of 2020 for trade mark infringement, passing off, breach of the deed, conspiracy and wrongful detention of labels. The defendants counterclaimed for breach of the deed (by having DR. WHO-branded water, labels and cartons made in Malaysia), conspiracy, $143,665.80 owed for water supplied, and interference with their IKEA business.

Issues

1. Whether the defendants infringed the plaintiffs' registered DR. WHO marks and committed passing off in Singapore.
2. How clause 2.3 of the deed should be read, and whether either side breached it.
3. Whether the conspiracy, wrongful detention and interference with trade claims were made out.
4. What remedies should follow, including injunctions, delivery up and statutory damages.

Holding

Dedar Singh Gill J allowed the plaintiffs' claims in part: the infringement and passing off claims succeeded in part, with an inquiry as to damages (or an account of profits) and an injunction, and the deed claim succeeded but attracted no further remedy. The other claims were dismissed, and statutory damages and delivery up were refused. On the counterclaims, the defendants succeeded in their undisputed claim for $143,665.80 for bottled drinking water supplied to the plaintiffs, and the remaining counterclaims were dismissed.

Reasoning

The infringement claims based on the droplet mark failed because the plaintiffs never showed the defendants' signs were used for water treatment, and those on the services mark failed for lack of evidence of delivery services. Turning to the goods mark, which the court found inherently distinctive, the deed gave no consent to the defendants' uses. Infringement was found for the droplet sign and Malaysian web address on the one truck shown to be in Singapore, the drwho.asia address on the IKEA cartons, the droplet sign and DR. WHO page titles on the two websites, which targeted Singapore customers, and the Singapore company name, used in supplying cartons to IKEA. Other uses failed, for example because the vehicles were not shown in Singapore, a copyright notice did not indicate trade origin, or the Facebook page did not target Singapore.

Passing off succeeded for broadly the same acts. Goodwill was not disputed, and the uses were likely to make the public think the defendants were linked to the plaintiffs. Only likely loss of sales was accepted as damage; tarnishment, erosion of distinctiveness and the risk of association with a defendant in trouble were not proved.

On the deed, the court read clause 2.3(2) as defined by the restraint clauses, so the prohibited use was supplying bottled water in the other's country bearing the other's registered mark or by way of passing off. The Oos breached it only through the fourth defendant's sale of cartons to IKEA, but that loss was already covered by the passing off remedies. The plaintiffs did not breach it, as having goods made in Malaysia for sale in Singapore was not supply in Malaysia. Conspiracy added nothing on either side, the detinue claim failed because the labels were offered for collection and no loss was proved, and asking IKEA to stop sales under the interim injunction was not unlawful. Statutory damages require use of a counterfeit mark, which was never alleged.

From the judgment