Case Details
- Citation: [2025] SGHCR 35
- Court: High Court of the Republic of Singapore
- Date: 2025-10-28
- Judges: AR Gan Kam Yuin
- Plaintiff/Applicant: Dr Who Waterworks Pte Ltd and others
- Defendant/Respondent: Dr Who (M) Sdn Bhd and others
- Legal Areas: Intellectual Property — Trade marks and trade names
- Statutes Referenced: Evidence Act, Evidence Act 1893, Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2023] SGHC 156, [2024] SGHC 163, [2025] SGHCR 35
- Judgment Length: 39 pages, 10,821 words
Summary
This case involves a dispute between Dr Who Waterworks Pte Ltd and its related companies (the Plaintiffs) and Dr Who (M) Sdn Bhd and its related companies (the Defendants) over the use of the "Dr. Who" trademark and related intellectual property. The High Court of Singapore previously found that the Defendants had infringed the Plaintiffs' trademark rights and engaged in passing off, and ordered an assessment of damages and an account of profits. This judgment addresses the specific remedies to be awarded to the Plaintiffs.
What Were the Facts of This Case?
The first Plaintiff, Dr Who Waterworks Pte Ltd, was engaged in the supply of 5-gallon bottled water, the leasing and placement of water dispensers, and initially also provided bottled water bearing its customers' marks. The second Plaintiff, Dr Who Global Watertech (S) Pte Ltd, took over the business of providing bottled water bearing customers' marks from the first Plaintiff. The third Plaintiff, Dr Who Laboratories (S) Pte Ltd, entered the direct piping sector to support the Plaintiffs' other businesses.
The first Defendant, Dr Who (M) Sdn Bhd, was incorporated by the second Defendant, Mr. Oo Tim Wee, and engaged in the business of dealing in mineral and aerated water, and the provision of integrated logistics services. The fourth Defendant, Dr Who (S) Pte Ltd, was incorporated by the second and third Defendants to engage in business activities including wholesale trade and transportation support.
The Plaintiffs had registered various "Dr. Who" trademarks in Singapore, while the first Defendant had registered a similar "Dr. Who" trademark in Malaysia. The parties had disputes over the use of these trademarks from 2013 to 2016, which were eventually settled in a 2017 Deed of Settlement.
However, the Plaintiffs later discovered that the Defendants were using the "Dr. Who" trademarks in various ways, including on a delivery vehicle, on IKEA water cartons, and on websites. This led the Plaintiffs to file the current legal proceedings against the Defendants for trademark infringement and passing off.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. What are 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 a delivery vehicle?
2. What are the profits the Defendants are required to account for in relation to the first Defendant's use of the "www.drwho.asia" sign on IKEA water cartons?
3. What are the profits the Defendants are required to account for in relation to the first Defendant's display of the "Dr. Who" quatrefoil device sign and the use of "Dr. Who (M) Sdn Bhd" and "Dr. Who (S) Pte Ltd" meta-titles on the "www.drwho.com.my" and "www.drwho.asia" websites?
4. What are the profits the Defendants are required to account for in relation to the use of the fourth Defendant's name "Dr. Who (S) Pte. Ltd."?
5. Do the expert's findings on the profits issue (Issue 3) mean that there is no loss of profits under Issue 1 and no profits to be accounted for under Issue 2?
How Did the Court Analyse the Issues?
On Issue 1, the court found that the Plaintiffs did not prove any actual loss of sales or profits resulting from the first Defendant's use of the "Dr. Who" marks on the delivery vehicle. The court noted that the bottled water transported on the vehicle did not actually carry the infringing marks, the Plaintiffs and Defendants had not negotiated a license for the use of the vehicle, and the Plaintiffs did not show that the bottled water sold by the Defendants would have otherwise been sold by the Plaintiffs. As the Plaintiffs did not prove actual loss of profits, the court held they could not be awarded royalties.
On Issue 2, the court allowed certain deductions from the Defendants' revenues for returned cartons, delivery charges, and payments to a third party. After these deductions, the court found the Defendants were required to account for profits of $984,593.25 in relation to the use of the "www.drwho.asia" sign on the IKEA water cartons.
On Issue 3, the court accepted the expert's findings that the Defendants' use of the "Dr. Who" marks on the websites did not result in any additional profits, as the websites did not generate any direct sales. The court held that this finding meant there were also no loss of profits under Issue 1 and no profits to be accounted for under Issue 2.
On Issue 4, the court found the Defendants were required to account for profits of $1,000 in relation to the use of the fourth Defendant's name "Dr. Who (S) Pte. Ltd."
What Was the Outcome?
In summary, the court ordered the following remedies:
1. No loss of profits awarded to the Plaintiffs under Issue 1.
2. The Defendants must account for profits of $984,593.25 in relation to the use of the "www.drwho.asia" sign on the IKEA water cartons.
3. No further profits to be accounted for by the Defendants under Issues 3 and 5.
4. The Defendants must account for profits of $1,000 in relation to the use of the fourth Defendant's name "Dr. Who (S) Pte. Ltd."
Why Does This Case Matter?
This case provides important guidance on the assessment of damages and accounting of profits in trademark infringement and passing off cases. The court's analysis demonstrates the high evidentiary burden on plaintiffs to prove actual loss of profits or unjust enrichment by defendants, even where infringement has been established.
The case also highlights the need for plaintiffs to carefully delineate the different acts of infringement and their respective financial impacts, to avoid double-counting of damages or profits. The court's acceptance of the expert's approach to avoid double-counting is a useful precedent.
Overall, this judgment underscores the practical challenges trademark owners can face in obtaining meaningful monetary remedies, even where infringement is proven. It serves as a reminder that plaintiffs must meticulously document and substantiate their claims for damages or profits in order to succeed.
Legislation Referenced
- Evidence Act
- Evidence Act 1893
- Trade Marks Act
- Trade Marks Act 1998
Cases Cited
- [2023] SGHC 156
- [2024] SGHC 163
- [2025] SGHCR 35
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.