Case Details
- Citation: [2025] SGHCR 35
- Court: High Court (General Division)
- Suit No: 600 of 2020
- Assessment of Damages No: 4 of 2025
- Date: 23 July 2025 (Judgment reserved); 1 October 2025 (Judgment); 28 October 2025 (date noted in the report)
- Judges: AR Gan Kam Yuin
- Plaintiff/Applicant: Dr Who Waterworks Pte. Ltd. (formerly known as Cana Services Pte. Ltd.); Dr Who Global Watertech (S) Pte. Ltd.; Dr Who Laboratories (S) Pte. Ltd. (formerly known as New Global Fluid Engineering & Machinery Pte. Ltd.)
- Defendant/Respondent: Dr Who (M) Sdn. Bhd.; Oo Tim Wee; Low Siew Eng; Dr Who (S) Pte. Ltd.
- Legal Areas: Intellectual Property; Trade Marks; Passing Off; Remedies (Damages and Account of Profits)
- Statutes Referenced: Evidence Act 1893
- Cases Cited: None stated in the provided extract
- Judgment Length: 39 pages, 10,821 words
- Procedural Posture: Assessment of damages/account of profits following earlier liability findings on trade mark infringement and passing off
Summary
This decision concerns the assessment of damages and/or an account of profits after the High Court had already found liability for trade mark infringement and passing off in an earlier judgment between the same parties. The plaintiffs, businesses associated with the “DR. WHO” branding in Singapore, alleged that the defendants used infringing signs and corporate identifiers across vehicles, product packaging, websites, and online metadata. Liability had been established for multiple categories of conduct, including the use of a “DR. WHO quatrefoil device” sign and related website signs, the use of a “www.drwho.com.my” sign on a delivery vehicle, the use of “www.drwho.asia” on IKEA cartons, and the use of the fourth defendant’s corporate name.
In this assessment judgment, the court focused on quantification: what loss of profits the first plaintiff suffered in relation to specific infringing acts, what profits the defendants were required to account for, and whether the expert’s findings on one category implied that there was no loss or no profits to be accounted for in other categories. The court accepted the plaintiffs’ expert evidence as unchallenged and applied valuation and causation principles to determine whether the plaintiffs had proved actual loss of profits (for damages) and whether profits could be attributed to the infringing conduct (for an account of profits).
What Were the Facts of This Case?
The first plaintiff was engaged in the supply of 5-gallon bottled water, the leasing and placement of water dispensers, and initially also provided bottled water bearing customers’ marks. The second plaintiff later took over the business of supplying and distributing bottled water bearing customers’ marks. The third plaintiff was incorporated for research and development and later entered the direct piping sector to support the plaintiffs’ other businesses.
The first defendant was incorporated by the second defendant, Mr Oo Tim Wee, and its initial shareholders included Mr Oo, his wife (the third defendant, Ms Low Siew Eng), and also Mr Koh and Ms Tan, who were involved in the plaintiffs’ business. The fourth defendant was incorporated by the second and third defendants to engage in wholesale trade and transportation support. The parties’ corporate relationships and ownership structures evolved over time, including the first plaintiff selling its shareholding in the first defendant to the remaining shareholders.
On the intellectual property side, the first plaintiff registered trade marks in Singapore. In 2004, it registered the “DR. WHO” mark in class 32 for bottled water and related beverages. In 2012, it registered a further mark comprising “DR. WHO” with four water droplets in a quatrefoil shape at the top right corner, in class 11 for water treatment units and class 40 for water treatment. In 2016, Mr Oo registered a corresponding “DR. WHO” mark in Malaysia with the quatrefoil design element for mineral and drinking water categories.
After disputes between the parties from 2013 to 2016, the parties entered into a Deed of Settlement in 2017 that envisaged a parting of ways and governed intellectual property held by the respective entities. Despite this, the plaintiffs discovered that around 2018 to 2019 the first defendant used a truck (Vehicle A) in Singapore bearing the “DR. WHO” sign with the quatrefoil device on its top right corner, along with contact details and the website “www.drwho.com.my”. The plaintiffs also discovered in 2020 that IKEA stores in Singapore were selling 500ml cartons of drinking water bearing “DRICKSVATTEN” but also bearing the “Dr. Who (M) Sdn. Bhd.” identifiers, including the first defendant’s address and contact details and the website “www.drwho.asia”.
Further, the plaintiffs accessed the defendants’ websites and observed that the “www.drwho.com.my” site contained the title “DR. WHO (M) Sdn Bhd”, a banner bearing the DR. WHO quatrefoil device sign, an image of a building bearing the same sign, and links to social media and to “www.drwho.asia”. The “www.drwho.asia” site had a similar design, with a meta-title bearing the fourth defendant’s name and a copyright notice “© 2020 DR. WHO (S) PTE LTD”. The court noted that meta-titles do not appear in the webpage content but are used to set the “topic” of the webpage and can appear in browser tabs and search engine results.
What Were the Key Legal Issues?
The assessment judgment identified five issues. The first issue concerned the first plaintiff’s loss of profits in relation to the first defendant’s use of the DR. WHO quatrefoil device sign and the “www.drwho.com.my” sign on Vehicle A. This required the court to determine whether the plaintiffs could prove actual loss of sales and, crucially, whether the infringing use caused that loss. The issue was broken down into sub-questions, including whether the bottled water transported in Vehicle A carried the marks, whether the parties had negotiated a licence, whether the plaintiffs proved any loss of sales in bottled water resulting from the marks on Vehicle A, and whether the plaintiffs proved that the defendants’ sales would otherwise have been made by the plaintiffs.
The second issue concerned the profits the defendants were to account for in relation to the first defendant’s use of the “www.drwho.asia” sign on the IKEA cartons. This required deductions for returned cartons, delivery charges, road tax and insurance, administrative expenses, and a payment to “Picco” (as reflected in the expert’s calculations). The third issue concerned profits to be accounted for in relation to the first defendant’s display of the DR. WHO quatrefoil device sign and the two meta-title signs on the websites. The fourth issue concerned profits to be accounted for in relation to the use of the fourth defendant’s name “DR.WHO (S) Pte. Ltd.”
Finally, the fifth issue asked whether the expert’s findings on issue 3 meant that there was no loss of profits under issue 1 and no profits to be accounted for under issue 2. This was essentially a coherence question: whether the court’s approach to causation and attribution across different categories of infringement should lead to consistent conclusions about loss and profits.
How Did the Court Analyse the Issues?
The court approached the assessment by building on the earlier liability findings. The earlier judgment had already determined that the defendants’ conduct constituted trade mark infringement under section 27(2) of the Trade Marks Act 1998 and that the same acts also amounted to passing off. In this assessment, the court therefore did not revisit infringement or passing off as such; instead, it focused on quantification and proof of loss/profit attribution.
On evidence, the plaintiffs called a witness of fact and an expert witness, Mr Kon, a qualified chartered valuer and appraiser and chartered accountant with more than 35 years’ experience. The defendants’ sole witness was Mr Oo. Importantly, the defendants did not challenge the expert’s qualifications or expertise and did not adduce any expert evidence to rebut the plaintiffs’ expert report. The court therefore treated the expert’s methodology and calculations as largely uncontroverted, while still scrutinising whether the underlying assumptions and legal requirements for damages/account of profits were satisfied.
A key analytical theme was avoidance of double counting. The expert explained that his opinion on each category of damages or profits included both trade mark infringement and passing off as the financial impact resulting from both would overlap. This is a practical and legal necessity in IP remedies: where both infringement and passing off are established for overlapping conduct, the court must ensure that the claimant is compensated once for the relevant economic harm rather than twice for the same loss.
For issue 1 (loss of profits relating to Vehicle A), the court’s analysis turned on causation and proof. The sub-issues reflected the court’s concern that the plaintiffs had not shown that the infringing signs were carried on the bottled water itself, that there was no licence permitting use, and—most critically—that the plaintiffs proved actual loss of sales caused by the infringing use. The court also required proof that the bottled water sold by the defendants would otherwise have been sold by the plaintiffs. Without such proof, the court could not award royalties or quantify loss of profits on a hypothetical basis. The reasoning reflected a consistent remedial principle: damages for trade mark infringement and passing off require a sufficient evidential foundation to link the infringement to the claimed economic loss.
For issue 2 (account of profits relating to “www.drwho.asia” on IKEA cartons), the court considered profits to be accounted for and then applied deductions. The expert’s approach included a general objection, followed by specific deductions: $9,715.75 for returned cartons; $10,800 for delivery charges described as “transport charges” (MYR 1,006,093); and further deductions for road tax and insurance and administrative expenses, as well as $1,884 paid to Picco. The court’s task was to ensure that only the net profits attributable to the infringing conduct were accounted for, consistent with the remedial logic of an account of profits. An account of profits is not a punitive measure; it is aimed at stripping the defendant of gains causally linked to the infringement, after allowing for legitimate costs.
For issue 3 (profits to be accounted for relating to the display of the DR. WHO quatrefoil device sign and meta-title signs on the websites), the court again focused on attribution and the evidential link between online presentation and commercial gain. Meta-title signs, while not visible in the webpage content, can influence search engine results and browser tabs, potentially affecting consumer discovery and choice. The court therefore treated the online acts as capable of contributing to profits, but it still required a defensible basis for quantifying those profits. The expert’s findings on this issue were central, and the court’s acceptance of the expert’s evidence (unrebutted by any defence expert) meant that the court could rely on the expert’s allocation method, subject to legal constraints against double counting and unsupported assumptions.
Issue 4 (profits to be accounted for relating to the fourth defendant’s corporate name “DR.WHO (S) Pte. Ltd.”) required the court to consider whether the corporate name use was sufficiently connected to the defendants’ commercial gains. Corporate identifiers can function as trade marks or trade names in the course of business and can reinforce brand recognition. The court’s earlier liability finding meant that infringement had been established, but the assessment still required quantification of profits attributable to that specific use, rather than a global or undifferentiated award.
Issue 5 addressed whether the expert’s findings on issue 3 implied that there was no loss of profits under issue 1 and no profits to be accounted for under issue 2. The court’s approach suggests that the remedial categories—damages for loss of profits versus account of profits—are conceptually distinct. Even if the court finds limited attribution in one category, it does not automatically negate all other categories. The court therefore treated issue 5 as a question of consistency in reasoning rather than a mechanical rule that one finding must determine all others.
What Was the Outcome?
The court’s conclusions, as reflected in the structure of the issues and sub-issues, indicate that the plaintiffs did not satisfy the evidential requirements for loss of profits under issue 1. In particular, where the plaintiffs could not prove actual loss of profits—such as by demonstrating loss of sales caused by the infringing signs on Vehicle A, and by proving that the defendants’ sales would otherwise have been made by the plaintiffs—the court could not award royalties or damages based on that claimed loss.
On the other hand, the court proceeded with the account of profits analysis for the relevant infringing acts under issues 2, 3, and 4, applying the expert’s profit allocation and deductions to arrive at the net profits to be accounted for. The practical effect is that the plaintiffs’ recovery depended on whether they could prove actual loss for damages, and on whether the defendants’ gains could be attributed to the infringing conduct for an account of profits.
Why Does This Case Matter?
This case is significant for practitioners because it illustrates the evidential discipline required at the remedies stage in Singapore IP disputes. Liability for trade mark infringement and passing off does not automatically translate into damages. Claimants must still prove actual loss of profits with sufficient causal connection, including proof that the defendant’s sales displaced the claimant’s sales. The court’s emphasis on the absence of proof of actual loss under issue 1 serves as a caution to brand owners: damages for loss of profits should be supported by robust commercial evidence, not merely by the existence of infringement.
At the same time, the decision underscores the structured nature of an account of profits. Where an account is pursued, the court will scrutinise net profit calculations and allow deductions for legitimate costs and expenses. The detailed deduction categories (returned cartons, transport/delivery charges, road tax and insurance, administrative expenses, and specific payments) demonstrate how courts expect experts to translate business records into a legally defensible profit figure.
Finally, the case is useful for understanding how courts treat online infringing conduct, including website content and meta-titles. While meta-titles do not appear in the visible webpage content, they can affect discoverability through search engines and browser interface elements. The court’s willingness to treat such signs as relevant to profit attribution—while still requiring evidential support—provides guidance for future cases involving digital branding and trade mark enforcement.
Legislation Referenced
Cases Cited
- None stated in the provided extract
Source Documents
This article analyses [2025] SGHCR 35 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.