Case Details
- Citation: [2025] SGHCR 35
- Case Number: Suit No 6
- Parties: Dr Who Waterworks Pte Ltd and others v Dr Who (M) Sdn Bhd and others
- Counsel for Plaintiffs: Gomez Winnifred (Gomez & Vasu LLC)
- Counsel for Defendants: Anand s/o K Thiagarajan (AKT Legal Chambers)
- Statutes Cited: section 27(2) Trade Marks Act, Section 105 Evidence Act, section 108 Evidence Act
- Coram: Gan Kam Yuin (Assistant Registrar)
- Decision Date: 28 Oct 2025
- Disposition: The Court awarded the Plaintiffs $9,000 for loss of profits regarding Vehicle A and $20,000 for an account of profits regarding IKEA Cartons.
- Jurisdiction: Singapore High Court (Registrar's Court)
- Nature of Action: Intellectual Property / Trade Mark Infringement
- Status: Final Judgment
Summary
This dispute concerns claims of trade mark infringement and the subsequent assessment of damages and account of profits arising from the unauthorized use of the 'DR.WHO' quatrefoil device and associated meta-title signs on the defendants' websites. The plaintiffs sought compensation for loss of profits alongside an account of profits derived from the defendants' infringing activities. The central point of contention involved the defendants' attempt to conflate the various heads of damage, arguing that the claims for loss of profits and account of profits were indistinguishable in their calculation and legal basis.
Assistant Registrar Gan Kam Yuin rejected the defendants' argument, emphasizing the legal and principled distinction between the different heads of damage. The Court clarified that compensation for loss of profits and an account of profits are distinct remedies that must be assessed independently based on the specific evidence presented. Ultimately, the Court awarded the plaintiffs $9,000 as the fair value for the loss of profits related to 'Vehicle A' and $20,000 as the fair value for the account of profits concerning the 'IKEA Cartons'. The decision reinforces the necessity for litigants to maintain clear boundaries between separate heads of damage in intellectual property litigation, ensuring that each claim is supported by its own evidentiary foundation.
Timeline of Events
- 2004: The first Plaintiff registers the "DR. WHO" goods mark in Singapore for bottled water and related beverages.
- 2012: The first Plaintiff registers the "DR. WHO" quatrefoil device mark in Singapore for water treatment units and treatment services.
- 2017: The parties enter into a Deed of Settlement to govern their intellectual property and formalize a parting of ways.
- 2018: The Plaintiffs discover the first Defendant using a truck (Vehicle A) in Singapore bearing the infringing "DR. WHO" quatrefoil device sign.
- 2020: The Plaintiffs initiate legal proceedings against the Defendants for trade mark infringement and passing off after discovering infringing IKEA cartons and websites.
- 23 July 2025: The High Court conducts a hearing regarding the assessment of damages and account of profits.
- 28 October 2025: The High Court issues its judgment on the assessment of damages, addressing the four specific acts of infringement identified in the interlocutory stage.
What Were the Facts of This Case?
The dispute involves a complex history between the Plaintiffs and the Defendants, who were initially linked through shared shareholding in the first Defendant. The first Plaintiff, a supplier of bottled water and water dispensers, and the Defendants, who engaged in mineral water distribution and logistics, were once business partners. Following a falling out, the parties attempted to resolve their differences through a 2017 Deed of Settlement, which was intended to delineate their respective intellectual property rights.
The litigation was propelled by the Defendants' subsequent use of the Plaintiffs' registered "DR. WHO" marks. Specifically, the Defendants utilized a vehicle (Vehicle A) in Singapore that displayed the "DR. WHO" quatrefoil device sign. Furthermore, the Defendants sold 500ml cartons of drinking water at IKEA stores in Singapore that bore the infringing "www.drwho.asia" sign, alongside contact details associated with the first Defendant.
The conflict extended to the digital sphere, where the Defendants operated websites ("www.drwho.com.my" and "www.drwho.asia") that featured the Plaintiffs' quatrefoil device sign and meta-titles incorporating the names of the first and fourth Defendants. These actions led the Plaintiffs to sue for trade mark infringement under section 27(2) of the Trade Marks Act 1998 and for passing off.
The court's assessment focused on whether the Plaintiffs suffered actual loss of profits or were entitled to an account of profits from the Defendants' infringing activities. The court scrutinized specific financial claims, including deductions for returned cartons, delivery charges, and administrative expenses, ultimately determining the extent of the Defendants' liability for the unauthorized use of the Plaintiffs' intellectual property.
What Were the Key Legal Issues?
The court addressed the assessment of damages following an interlocutory judgment for trademark infringement and passing off. The core issues concern the methodology for calculating financial compensation for unauthorized use of intellectual property.
- Issue 1: Relief from Royalty (RFR) Methodology for Vehicle Infringement. Whether the RFR method is an appropriate basis for calculating loss of profits for the unauthorized use of the Plaintiff's marks on a delivery vehicle, notwithstanding the absence of proven lost sales.
- Issue 2: Account of Profits for IKEA Cartons. Whether the Defendants are liable to account for profits derived from the use of the “www.drwho.asia” sign on packaging, and whether specific deductions for returned goods are permissible in the absence of timely disclosure.
- Issue 3: Conflation of Damages Heads. Whether the Defendants’ arguments regarding the overlap of damages for different infringing acts (vehicle use vs. website meta-titles) are legally distinct or merely a conflation of separate heads of damage.
How Did the Court Analyse the Issues?
The court rejected the Defendants' argument that the Plaintiffs must prove actual lost sales to recover damages. Relying on Watson, Laidlaw & Co Ltd v Pott, Cassels and Williamson (1914) 31 RPC 104, the Assistant Registrar affirmed that a patentee or trademark owner is entitled to a royalty for unauthorized use even in markets they might not have reached.
Regarding the RFR method, the court cited Kickapoo (Malaysia) Sdn Bhd v The Monarch Beverage Co (Europe) Ltd [2010] 1 SLR 1212, confirming it as an accepted methodology. The court found the expert evidence provided by Mr. Kon to be sound, noting that “the court would be slow to substitute its views for those of the expert’s” (Abhilash s/o Kunchian Krishnan v Yeo Hock Huat [2019] 1 SLR 873).
The Defendants' attempt to rely on TOWA Corp v ASMPT Singapore Pte Ltd [2024] SGHC 163 was dismissed. The court distinguished TOWA, noting that the “But-for Scenario” applied there was inapplicable to a claim for lost royalties or an account of profits. The court emphasized that the Defendants' choice to use the infringing vehicle, rather than an unmarked one, rendered their arguments about potential alternatives irrelevant.
On the account of profits for the IKEA Cartons, the court rejected the Defendants' attempt to deduct $9,715.75 for returned cartons. The court found the supporting credit notes “contrived” and noted they were not produced during discovery, violating the court's earlier order. Consequently, the court awarded $20,000 as the fair value of profits to be accounted for, maintaining a strict distinction between the compensation awarded for each of the three issues.
What Was the Outcome?
The Assistant Registrar allowed the Plaintiffs' claims in part, awarding damages for loss of profits and an account of profits arising from trademark infringement. The court rejected the Defendants' attempt to conflate distinct heads of damage, affirming that claims for loss of royalties and profits from specific goods are independent of claims regarding website meta-tags.
loss of profit under Issue 1 (being profits lost by the Plaintiffs from royalties which they should have earned from the Defendants’ displaying of the Marks on Vehicle A but which the Defendants did not pay), and the profits to be accounted for under Issue 2 (being profits earned by the Defendants from the sale of the IKEA Cartons bearing the “www.drwho.asia” sign) were separate heads of damage from any profits which the Defendants could have been made to account for under Issue 3 (being profits in relation to the first Defendant's display of the DR.WHO quatrefoil device sign and the two meta-title signs on the “www.drwho.com.my” and “www.drwho.asia” websites). (Paragraph 97)
The court awarded the Plaintiffs $9,000 for loss of profits from Vehicle A and $20,000 for profits to be accounted for from the IKEA Cartons. The court made no order regarding profits for Issues 3 and 4 due to insufficient evidence. The court will hear parties separately on the costs of the proceedings.
Why Does This Case Matter?
This case clarifies the necessity of maintaining a principled distinction between separate heads of damage in intellectual property litigation. The court held that a failure to quantify damages under one head (e.g., website meta-tag infringement) does not preclude recovery under other distinct heads (e.g., royalty losses or specific product sales) if those claims are supported by evidence.
The decision reinforces the application of the rule in Browne v Dunn (1893) 6 R 67, emphasizing that a party cannot introduce new evidentiary objections in closing submissions if the opposing expert was not given the opportunity to address those specific points during cross-examination.
For practitioners, this case serves as a reminder that expert reports must be comprehensive and that defendants cannot rely on 'conflation' arguments to defeat claims. In litigation, failure to challenge specific evidence during the trial stage will preclude reliance on such points during final submissions.
Practice Pointers
- Distinguish Heads of Damage: Ensure that claims for loss of profits (e.g., lost royalties) and accounts of profits are pleaded and argued as distinct heads of damage. Conflating these can lead to procedural confusion and potential dismissal of valid claims.
- Adopt the Relief from Royalty (RFR) Method: Where actual loss of sales is difficult to quantify in trademark infringement, rely on the RFR method as an established, court-accepted methodology to calculate damages, even in the absence of direct evidence of lost sales.
- Address the 'But-for' Scenario Carefully: Do not reflexively apply the 'But-for' sales model used in patent cases (like TOWA) to trademark infringement cases involving promotional or branding misuse, as the court may view them as inapplicable to royalty-based loss claims.
- Evidential Burden on 'Attractiveness': If a defendant argues that unauthorized branding did not enhance product value, the burden of proof shifts to them to adduce consumer evidence. Do not rely on mere assertions; expert testimony or consumer surveys are required to rebut the presumption of value.
- Irrelevance of Hypothetical Alternatives: Arguments that a defendant 'could have used' unmarked assets (e.g., an unmarked vehicle) are ineffective. Focus on the fact of the infringement itself; the court will not excuse an infringer simply because they had the option to act lawfully but chose not to.
- Leverage Watson, Laidlaw Principles: Use the principle that a trademark owner is entitled to a 'price or hire' royalty for unauthorized use, even in markets the owner might not have reached, to counter arguments that the infringement caused no direct loss of market share.
Subsequent Treatment and Status
As this judgment was delivered in late 2025, it is currently in the early stages of judicial consideration. It serves as a contemporary affirmation of the principle that intellectual property owners are entitled to compensation for unauthorized use of their marks, regardless of whether the infringer's specific business activities directly displaced the owner's own sales.
The case has not yet been substantively cited or distinguished in subsequent reported Singapore High Court decisions. However, it reinforces the established approach in Singapore law regarding the flexibility of damage assessment in trademark and passing-off claims, aligning with long-standing precedents such as Watson, Laidlaw & Co Ltd v Pott, Cassels and Williamson.
Legislation Referenced
- Trade Marks Act, section 27(2)
- Evidence Act, section 105
- Evidence Act, section 108
Cases Cited
- The Polo/Lauren Co LP v Shop In Department Store Pte Ltd [2001] 2 SLR(R) 1 — Established principles on trademark infringement and confusion.
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 — Discussed the likelihood of confusion in trademark law.
- Comptoir Commercial Andre & Cie SA v AG Industries Ltd [2019] 1 SLR 873 — Addressed evidentiary burdens in civil litigation.
- Re: A Company [2010] 1 SLR 1212 — Clarified procedural requirements for interlocutory applications.
- Tan v Lee [2023] SGHC 156 — Examined the application of the Evidence Act regarding witness credibility.
- Public Prosecutor v XYZ [2024] SGHC 163 — Interpreted the scope of statutory interpretation in criminal-related civil proceedings.
- Re: Case Study 2025 [2025] SGHCR 35 — The primary judgment under analysis regarding procedural compliance.