Case Details
- Citation: [2015] SGHC 105
- Title: Bosch Corp v Wiedson International (S) Pte Ltd and others and another suit
- Court: High Court of the Republic of Singapore
- Date of Decision: 16 April 2015
- Judge: Tay Yong Kwang J
- Coram: Tay Yong Kwang J
- Case Number(s): Suit No 845 of 2006 (Taking of Accounts No 1 of 2014) and Suit No 133 of 2011 (Taking of Accounts No 2 of 2014)
- Plaintiff/Applicant: Bosch Corp
- Defendants/Respondents: Wiedson International (S) Pte Ltd and others and another suit
- Parties (as described): Bosch Corp (registered proprietor of trade marks); Wiedson International (S) Pte Ltd (alleged trader in counterfeit goods); Yap Kim Yok (managing director and shareholder); Gan Yeok Chuan (executive and shareholder)
- Procedural Posture: Second judgment in relation to two trade mark infringement suits; concerned the taking of accounts of profits
- Legal Area: Intellectual Property / Trade Marks; Damages – Assessment; Account of profits
- Key Statutory Provision Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), s 31(2)(c)
- Counsel: Ng Chee Weng, Raymund A Anthony and Wiyatno Gerald Mursjid (Gateway Law Corporation) for the plaintiff in Suit 845 of 2006 and the plaintiffs in Suit 133 of 2011; Suresh s/o Damodara (Damodara Hazra LLP) for the defendants in Suit 845 of 2006 and the defendants in Suit 133 of 2011
- Prior/Related Decisions Mentioned: Bosch Corp (Japan) v Wiedson International (S) Pte Ltd and others and another suit [2013] 2 SLR 700; CA 152 of 2012 (Court of Appeal); Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) [2011] SGHC 268
- Cases Cited: [2011] SGHC 268; [2015] SGHC 105
- Judgment Length: 9 pages, 4,385 words
Summary
This High Court decision concerns the taking of accounts of profits in two related trade mark infringement suits brought by Bosch Corp against Wiedson International (S) Pte Ltd and two individuals associated with the company. The court had already determined liability in earlier proceedings; the present judgment focuses narrowly on how to quantify the profits attributable to the defendants’ infringing sales for the relevant period (2000 to 2006). The court’s task was therefore not to decide whether infringement occurred, but to compute the monetary value of the infringer’s profits derived from that infringement.
The court applied the statutory framework for an account of profits under s 31(2)(c) of the Trade Marks Act (Cap 332, 2005 Rev Ed). It reiterated that the accountable amount is the actual profit made by the infringer that is derived from the infringement, subject to deductions for costs and expenses and, where necessary, apportionment where infringing acts form part of a wider chain of activities. The central difficulty was evidential: the plaintiffs’ documentary access was severely limited, leaving only seized materials from a raid and the defendants’ audited financial statements.
In computing profits, the court rejected one of the plaintiffs’ preferred approaches and made several evidentially cautious adjustments. Notably, it excluded amounts from pro forma invoices on the basis that, on the available evidence, pro forma invoices were not sufficient to prove that a sale had occurred and could risk double counting. Overall, the court adopted a conservative method that resolved doubts in the defendants’ favour, reflecting the plaintiffs’ failure to obtain the necessary documents despite court orders.
What Were the Facts of This Case?
The litigation history was protracted and involved both criminal and civil proceedings. In 2006, Bosch received information that Wiedson was trading in goods that infringed Bosch’s trade marks. Bosch engaged private investigators and, based on their reports, lodged a complaint before a magistrate. A search warrant was issued, and the premises of Wiedson were raided by the Intellectual Property Rights Branch (“IPRB”) of the Criminal Investigation Department. During the raid, the IPRB seized thousands of components and packaging items suspected to be linked to offences under the Trade Marks Act, together with a few hundred documents (the “Seized Documents”).
Bosch commenced criminal proceedings (pursuant to a fiat from the Public Prosecutor) and also initiated civil proceedings for trade mark infringement. The defendants stayed the civil action pending the outcome of the criminal proceedings. A settlement proposal was discussed: Bosch would withdraw some charges and amend the remaining charges so that the allegedly infringing goods were practically reduced to one nozzle and one plunger; the defendants would plead guilty to the remaining charges; and Bosch’s counsel would not submit on sentence nor object to disposal of the seized goods. However, the defendants ultimately did not sign the settlement agreement after the criminal proceedings concluded.
After the criminal proceedings ended, Bosch revived the civil action and applied to strike out the defence. The assistant registrar struck out the defence and entered interlocutory judgment on the basis that it disclosed no reasonable defence. That decision was upheld on appeal to the High Court and, in substance, by the Court of Appeal, save that the defendants were allowed to defend a particular paragraph relating to counterfeiting. As a result, the defendants were liable for infringing Bosch’s trade mark by selling infringing products from 2000 to 2006, which is the period for which Bosch elected to claim an account of profits.
For the taking of accounts, the court relied on affidavits from factual witnesses and two expert witnesses. Bosch’s expert was Mr Tay Puay Cheng of KPMG LLP, and Wiedson’s expert was Mr Abuthahir Abdul Gafoor of Stone Forest Corporate Advisory Pte Ltd. The parties agreed to dispense with cross-examination of factual witnesses and to have the experts discuss the computation with the judge in chambers rather than through adversarial cross-examination. The court also noted that the material facts and claims in the two suits were identical except for the plaintiffs and the trade marks involved, and the parties agreed that the decision in Suit 845/2006 would bind Suit 133/2011.
What Were the Key Legal Issues?
The principal legal issue was how to quantify the “profits” to be accounted for under s 31(2)(c) of the Trade Marks Act. The court had to determine what constituted the actual profit made by the infringer that was derived from the infringement, and how to compute that profit in a manner consistent with established principles. This required the court to consider the proper treatment of receipts, deductions for costs and expenses, and any necessary apportionment where infringing sales were part of a broader commercial chain.
A second issue was evidential and methodological: the court had to decide between competing expert approaches in the context of limited documentary evidence. The Seized Documents reflected only about 10% of Wiedson’s total sales for the relevant period, and the plaintiffs, despite obtaining disclosure orders, received “nil” lists of documents from the defendants. The court therefore had to decide how to estimate revenue and costs attributable to infringing sales without complete records.
Third, the court had to address specific accounting disputes that affected the computation of revenue and net profit. One such dispute was whether pro forma invoices should be included as revenue attributable to infringing sales. This issue had a direct impact on the size of the accountable profit and raised concerns about whether the evidence proved actual sales rather than mere quotations or internal documents.
How Did the Court Analyse the Issues?
The court began by restating the applicable legal principles. In an action for trade mark infringement, the court may grant an account of profits under s 31(2)(c) of the TMA. The court referred to the approach summarised in Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) [2011] SGHC 268. The focus is on actual profit made by the infringer that is derived from the infringement. The accountable amount may be reduced by deducting costs and expenses from receipts. Where profits arise from a chain of activities and the infringing acts occupy only part of that chain, the court may apportion the profits accordingly.
Having set out the legal framework, the court turned to accounting methodology. The court emphasised that the computation was complicated by the paucity of documents. The Seized Documents showed revenue of $4,545,051, whereas Wiedson’s audited financial statements showed total sales of $45,464,319 for 2000 to 2006. The plaintiffs sought management accounts and lists of product codes, suppliers and customers relating to infringing products. Despite two disclosure orders, the plaintiffs received no additional documents because the defendants filed nil lists. Consequently, the plaintiffs’ evidential base was limited to the Seized Documents, the audited financial statements, and some schedules to those statements.
The court noted that this evidential gap produced wide divergence between expert estimates. Mr Tay estimated net profit attributable to infringing sales at $678,027, while Mr Gafoor estimated it at not more than $41,953. Bosch argued that the defendants were hiding documents and vacillating between positions, and urged the court to take an adverse view of the defendants’ conduct. However, the court’s analysis remained anchored in what could be proved on the available evidence and in the need to avoid speculative computation.
In comparing the experts’ approaches, the court stated that it was less concerned with the experts’ formulas than with their underlying methods and assumptions, particularly regarding how revenue and expenses were derived. Mr Tay’s method extrapolated the percentage of infringing sales from the Seized Documents to total sales, then applied an estimated profit margin derived from costs associated with the sale of goods. Mr Gafoor’s method relied on source documents only: he identified sales and purchases of products whose item code or description code contained the plaintiff’s trade mark, estimated revenue from those source documents, applied a gross profit margin based on price data for each infringing item, and then deducted other variable expenses to arrive at net profit. Mr Gafoor also relied on discussions and verbal representations from Yap and Gan.
The court accepted that in an ideal scenario with complete information, both approaches might converge. But given the documentary limitations, the court treated the key question as whether the computation could reliably identify revenue and costs attributable to infringing sales. The court therefore proceeded to resolve specific disputes in a way that reflected the burden of proof and the evidential uncertainty.
On the issue of pro forma invoices, the court held that pro forma invoices should not be included in the computation of revenue attributable to infringing sales. The court reasoned that, on the available evidence, a pro forma invoice was not sufficient to prove that a sale had in fact occurred. It was plausible that a business labels a quotation as a pro forma invoice. Further, if a commercial invoice corresponded to a pro forma invoice, including both would risk double counting. Accordingly, the court excluded pro forma invoice amounts, which benefitted the defendants.
In addition, the court adopted a general evidential stance: where there were doubts that the parties could not resolve, the court resolved the doubt in the defendants’ favour and proceeded on the basis that Bosch had not proved Wiedson’s profits to that extent. This approach was consistent with the court’s concern that the plaintiffs’ inability to obtain documents—despite disclosure orders—meant that the court could not simply assume that all sales reflected in the defendants’ financial statements were infringing or that all relevant costs and revenues could be reliably attributed to infringement.
Although the provided extract truncates the remainder of the judgment, the reasoning pattern is clear from the portions quoted: the court used a conservative, evidence-driven approach to estimation, excluded categories of documents that did not reliably establish sales, and avoided speculative extrapolation beyond what the Seized Documents and audited financial statements could support. The court’s approach also reflects a balancing exercise between deterrence and fairness: an account of profits is intended to deprive infringers of gains from infringement, but it is not a punitive mechanism that substitutes conjecture for proof.
What Was the Outcome?
The court’s outcome was to determine the profits attributable to infringing sales for the period 2000 to 2006, and to apply that determination across both suits because the parties agreed that the decision in Suit 845/2006 would bind Suit 133/2011. The court’s key adjustments included excluding pro forma invoices from revenue attributable to infringing sales and resolving evidential doubts in the defendants’ favour where Bosch had not proved profits to the extent claimed.
Practically, the decision reduced the risk of over-compensation by ensuring that the accountable profit was computed only to the extent supported by reliable evidence. The court’s methodology therefore shaped the final quantum of the account of profits and, by extension, the damages outcome tied to that account.
Why Does This Case Matter?
This case is significant for practitioners because it illustrates how Singapore courts approach the quantification of profits in trade mark infringement cases where documentary evidence is incomplete. While an account of profits can be a powerful remedy, the computation is highly fact-sensitive and depends on what the plaintiff can establish about the infringer’s receipts, costs, and the linkage between infringement and profit. The court’s emphasis on evidence-based estimation, rather than aggressive extrapolation, is a useful guide for both plaintiffs and defendants.
For plaintiffs, the decision underscores the importance of disclosure strategy and document preservation. Bosch obtained disclosure orders but ultimately received nil lists of documents. The court’s repeated resolution of doubts in the defendants’ favour demonstrates that, even where a plaintiff suspects concealment, the court will still require a defensible evidential foundation for the computation. Plaintiffs seeking an account of profits should therefore consider early and targeted disclosure applications, forensic accounting steps, and clear identification of the evidential basis for revenue and cost attribution.
For defendants, the case provides reassurance that courts will scrutinise the reliability of accounting inputs such as pro forma invoices and will guard against double counting. It also shows that, even when liability is established, the quantum of profits is not automatic; it must be computed within the statutory framework and consistent with the principles of deduction and apportionment. The decision therefore has practical implications for expert evidence: experts must justify not only their mathematical formulae but also the evidential assumptions that underpin revenue and expense estimates.
Legislation Referenced
Cases Cited
- Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) [2011] SGHC 268
- Bosch Corp (Japan) v Wiedson International (S) Pte Ltd and others and another suit [2013] 2 SLR 700
- Bosch Corp v Wiedson International (S) Pte Ltd and others and another suit [2015] SGHC 105
Source Documents
This article analyses [2015] SGHC 105 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.