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 Numbers: 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)
- Proceedings Type: Damages – Assessment; taking of account of profits
- Plaintiff/Applicant: Bosch Corp
- Defendants/Respondents: Wiedson International (S) Pte Ltd and others and another suit
- Other Plaintiffs (in the related suit): Denso (as referenced in the judgment’s background)
- Parties’ Roles (as described): Bosch and Denso are registered proprietors of trade marks; Wiedson allegedly traded in counterfeit goods infringing those marks
- Key Period for Account of Profits: 2000 to 2006 (for which Bosch elected to claim an account of profits)
- Counsel for Plaintiff(s): 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
- Counsel for Defendants: Suresh s/o Damodara (Damodara Hazra LLP) for the defendants in Suit 845 of 2006 and the defendants in Suit 133 of 2011
- Prior Procedural History (high level): Defence struck out as abuse of process; liability for trade mark infringement established; this is the second judgment in respect of the two suits
- Prior Judgment(s) Mentioned: Bosch Corp (Japan) v Wiedson International (S) Pte Ltd and others and another suit [2013] 2 SLR 700; Court of Appeal decision in CA 152 of 2012 (as described)
- Judgment Length: 9 pages, 4,313 words (per metadata)
Summary
In Bosch Corp v Wiedson International (S) Pte Ltd [2015] SGHC 105, the High Court (Tay Yong Kwang J) dealt with the assessment of damages by way of a taking of account of profits in two related trade mark infringement suits. The plaintiffs (Bosch and, in the parallel suit, Denso) were registered proprietors of trade marks. The defendants (Wiedson and two individuals) were found liable for infringing the plaintiffs’ trade marks by selling counterfeit goods over a defined period. This judgment focused not on liability, but on the computation of the profits attributable to the infringing sales.
The court applied the established framework for an account of profits under s 31(2)(c) of the Trade Marks Act (Cap 332). The central difficulty was evidential: the plaintiffs had only limited documents seized during a raid, and despite court orders for disclosure, the defendants provided “nil” lists of documents. The experts’ profit estimates diverged dramatically. The court therefore had to decide how to compute revenue and expenses on the basis of incomplete records, including how to treat pro forma invoices and how to resolve uncertainties in the computation.
Ultimately, the court adopted a cautious approach. It excluded amounts in pro forma invoices from the revenue computation because, on the evidence, a pro forma invoice was not sufficient to prove that a sale had occurred and could risk double counting. More broadly, where there were gaps and unresolved doubts, the court proceeded on the basis that the plaintiffs had not proved the defendants’ profits to the extent claimed. The decision illustrates how evidential insufficiency affects profit quantification in trade mark infringement cases, and it provides practical guidance on the evidential and accounting methodology expected in taking-of-accounts proceedings.
What Were the Facts of This Case?
The litigation had a long procedural history. In 2006, Bosch received information that Wiedson was trading in goods that infringed Bosch’s trade marks. Bosch engaged private investigators and, based on the resulting reports, lodged a complaint before a magistrate. A search warrant was issued, and the Intellectual Property Rights Branch (“IPRB”) of the Criminal Investigation Department raided Wiedson’s premises. During the raid, the IPRB seized thousands of components and packaging items (including nozzles, nozzle caps and seals, plungers, plunger seals, and related packaging) and also seized a few hundred documents (the “Seized Documents”). The seized goods were suspected to be the subject of offences under the Trade Marks Act.
Bosch commenced both criminal proceedings (pursuant to a fiat from the Public Prosecutor) and a civil action for trade mark infringement. The defendants stayed the civil action pending the outcome of the criminal proceedings. The parties then explored a settlement arrangement tied to the criminal process: 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 those remaining charges; and Bosch’s counsel would neither submit on sentence nor object to a court order disposing of the seized goods. In return, the defendants were to provide an undertaking relating to future non-infringement and to pay “suitable monetary compensation” and publish a public apology.
However, the settlement agreement was not ultimately signed. After the criminal proceedings concluded, Bosch revived the civil action. Bosch applied to strike out the defence. The assistant registrar struck out the defence and entered interlocutory judgment on the basis that the defence disclosed no reasonable defence. Tay Yong Kwang J later upheld the strike-out decision on appeal, characterising the defence as an abuse of court process; the Court of Appeal upheld the decision, with a limited allowance for the defendants to defend one paragraph of the statement of claim concerning counterfeiting. As a result, the defendants were liable for trade mark infringement by selling infringing products from 2000 to 2006.
Following liability, the court proceeded to the taking of account of profits. The suits were structured as two separate actions with different plaintiffs and trade marks, but the material facts and claims were identical. For the purposes of the taking of accounts, the parties agreed that the decision in Suit 845/2006 would bind Suit 133/2011. This judgment therefore addressed the computation of profits attributable to infringing sales for the period 2000 to 2006, for which Bosch elected to claim an account of profits.
What Were the Key Legal Issues?
The principal legal issue was how to compute the amount of profits to be accounted for under s 31(2)(c) of the Trade Marks Act. An account of profits is not a mechanical exercise; it requires the court to identify the actual profit made by the infringer that is derived from the infringement. The court must then determine what deductions are permissible (such as costs and expenses) and whether apportionment is required where infringing acts form only part of a chain of activities generating profits.
A second, closely related issue concerned the evidential burden and the treatment of uncertainty. The plaintiffs faced a serious evidential gap: the Seized Documents represented only about 10% of Wiedson’s total sales from 2000 to 2006, based on audited financial statements. Despite multiple court orders for disclosure, the plaintiffs received no additional documents because the defendants filed “nil” lists. This meant that the court had to decide how to compute revenue and expenses using incomplete records, and how to treat disputed items where proof was lacking.
Finally, the court had to resolve specific accounting questions that affected the computation of revenue attributable to infringing sales. One prominent issue was whether pro forma invoices should be included as revenue. The inclusion or exclusion of such documents could materially change the profit estimate. The court also had to decide how to treat other contested items (including those identified by codes in the defendants’ materials), and whether to extrapolate from the Seized Documents to overall sales in the absence of comprehensive documentation.
How Did the Court Analyse the Issues?
The court began by restating the governing legal principles for an account of profits in trade mark infringement. Under s 31(2)(c) of the Trade Marks Act, the court may grant an account of profits. The approach was summarised in Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd [2011] SGHC 268, which the judge cited for the proposition that the court is concerned with actual profit derived from the infringement. The court’s analysis therefore proceeded in two stages: first, determining the receipts and the net profit attributable to infringing sales; and second, applying deductions and apportionment where appropriate.
In this case, the computation was complicated by the paucity of documents. The revenue reflected in the Seized Documents was $4,545,051, while Wiedson’s audited total sales for 2000 to 2006 were $45,464,319. The plaintiffs sought management accounts, lists of product names and codes, and supplier and customer information relating to the infringing products. Despite two disclosure orders, the defendants filed “nil” lists, leaving the plaintiffs with only the Seized Documents, audited financial statements, and some schedules. This evidential deficit drove a wide divergence between the experts: Bosch’s expert estimated net profit attributable to infringing sales at $678,027, whereas Wiedson’s expert 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 their conduct. While the judgment acknowledges Bosch’s submission, the court’s analysis remained anchored in the need to compute profits on the evidence available and to resolve uncertainties in a principled way. The judge emphasised that the experts’ formulae were less important than their underlying methods and assumptions, particularly regarding how revenue and expenses were derived.
The court then compared the experts’ approaches. Mr Tay (for Bosch) proposed estimating net profit by multiplying estimated revenue from infringing sales by an estimated profit margin. Revenue would be estimated by extrapolating the percentage of infringing sales reflected in the Seized Documents to Wiedson’s total sales. The profit margin would be derived by estimating costs associated with the sale of the goods. Mr Gafoor (for Wiedson) took a different approach: he extracted information on sales and purchases of products whose item code or description code contained the plaintiffs’ trade mark, derived estimated revenue from infringing sales based on source documents only, applied a gross profit margin estimated from price data for each infringing item, and then deducted variable expenses to arrive at net profit. Notably, Mr Gafoor relied not only on source documents but also on discussions and verbal representations provided by the managing director and executive (Yap and Gan).
Given the incomplete documentation, the judge focused on whether the computation could reliably connect receipts and expenses to infringing sales. In computing revenue attributable to infringing sales, two main areas of contention arose. The first was whether pro forma invoices should be included. The second was whether the percentage of infringing sales should be extrapolated from the Seized Documents to overall sales. The judge’s reasoning on pro forma invoices is particularly instructive for practitioners because it demonstrates the evidential threshold for treating documents as proof of sales.
On the pro forma invoice issue, Mr Tay viewed pro forma invoices as reasonable to include because, absent contrary evidence, the existence of a pro forma invoice was prima facie evidence that a sale had occurred. Wiedson argued that pro forma invoices were used as quotations and that counting them alongside commercial invoices would double count some sales. The judge rejected Bosch’s inclusion approach. He held 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. Moreover, if a commercial invoice corresponded to a pro forma invoice, including both would lead to double counting. Accordingly, the court excluded pro forma invoice amounts from the computation of revenue attributable to infringing sales, which benefited the defendants.
More generally, the judge adopted a burden-of-proof style approach to uncertainty. He stated that where there were other areas of doubt and the parties could not agree on a solution, he resolved the doubt in the defendants’ favour and proceeded on the basis that Bosch had not proved Wiedson’s profits to that extent. This is a significant methodological point: even where the defendants’ conduct may have been questionable, the court still requires the plaintiff to prove the quantum of profits attributable to infringement, and it will not simply assume the plaintiff’s figures in the face of evidential gaps.
The judgment also indicates that the court had to address further contested items (including those with code “DN-ND” in the parallel suit). While the provided extract truncates the remainder of the analysis, the approach described earlier—scrutinising the evidential basis for revenue and expenses, excluding unreliable proxies for sales, and resolving unresolved doubts against the party bearing the burden—would govern those further computations as well.
What Was the Outcome?
The court’s outcome was the determination of the profits to be accounted for in the taking of accounts, applying the legal framework for an account of profits and the evidentially constrained accounting methodology. The judge excluded pro forma invoices from revenue attributable to infringing sales and, more broadly, resolved doubts in the defendants’ favour where Bosch had not proved profits to the extent claimed. This necessarily reduced the plaintiffs’ profit estimate relative to the more expansive approach advocated by Bosch’s expert.
Practically, the decision provides a quantified assessment of damages by way of account of profits for the period 2000 to 2006, and it also binds the parallel suit (Suit 133/2011) because the parties agreed that the decision in Suit 845/2006 would apply. The judgment therefore served both as a substantive determination of quantum and as a procedural consolidation of the accounting outcome across the two related trade mark infringement actions.
Why Does This Case Matter?
Bosch Corp v Wiedson International is important for lawyers because it demonstrates how courts handle the difficult intersection of (i) trade mark infringement remedies through an account of profits and (ii) evidential limitations in quantifying profits. The case underscores that an account of profits is not automatically awarded in the abstract; it requires a careful computation of actual profit derived from infringement, with deductions and apportionment considered where relevant. The court’s reliance on established principles from Main-Line Corporate Holdings shows continuity in the doctrinal approach.
From a litigation strategy perspective, the case highlights the consequences of incomplete disclosure. Although Bosch argued for an adverse inference based on the defendants’ “nil” disclosure and alleged document withholding, the court’s computation remained grounded in proof. The judge’s repeated emphasis on resolving doubts in the defendants’ favour indicates that adverse conduct may not substitute for evidential support for the quantum claimed. Practitioners should therefore ensure that, where possible, plaintiffs build a robust evidential record for revenue and cost attribution, rather than relying solely on the inference that the infringer must have made more profit.
Finally, the decision is a useful reference point on the evidential status of business documents in profit computations. The exclusion of pro forma invoices as revenue illustrates that courts will scrutinise whether documents actually evidence sales, and will be alert to double counting risks. For defendants, the case provides a roadmap for challenging profit calculations by attacking the evidential reliability of revenue proxies. For plaintiffs, it signals the need to obtain and authenticate documents that establish actual transactions, not merely pre-contract or quotation materials.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), in particular s 31(2)(c)
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
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.