In more detail

Background

The plaintiffs and the defendants are in the bottled water business. 

Dr Who Waterworks Pte Ltd ("First Plaintiff")  was incorporated in Singapore on 19 February 1998 and is jointly operated by Koh Tiong Gee , his wife, Tan Kim Peng ("Kohs") and Benji Ng Ser Kwei. The second and third plaintiff respectively were two companies incorporated by Mr. Koh for the purposes of expansion of the First Plaintiff's business. 

Dr Who (M) Sdn Bhd ("First Defendant") was incorporated in Malaysia on 11 April 2007 by the second defendant, Oo Tim Wee ("Mr. Oo") to operate as a manufacturing arm of the First Plaintiff. The third defendant, Low Siew Eng (Mr. Oo's wife) was a shareholder of the First Defendant. The fourth defendant was incorporated by the second and third defendants in 2019. 

Following a lawsuit by the Kohs against Mr. Oo and his wife in Malaysia, the Kohs and Oos entered into a deed of settlement dated 13 February 2017. The deed of settlement stipulated that the plaintiffs and the Kohs were entitled to use the mark "DR. WHO" in Singapore and any other jurisdiction apart from Malaysia, while the defendants and the Oos were entitled to use the mark in Malaysia and any other jurisdiction apart from Singapore.

In Singapore, the First Plaintiff registered the following marks in the following classes:

• "" in Class 32 ("Dr. WHO Goods Mark") and Class 39
• "" ("Dr. WHO Quatrefoil Device Mark") in Class 11 and Class 40

Claim for trademark infringement

Subsequently, the plaintiffs found out that the defendants had been using DR. WHO marks in Singapore. On 3 July 2020, the plaintiffs commenced the present proceedings and brought an action for trademark infringement and passing off, amongst other claims. The plaintiffs alleged that the defendants' usage of (1) " " ("DR. WHO Quatrefoil Device Sign"), (2) the "© 2020 DR. WHO (S) PTE LTD" notice ("Copyright Notice") and the (3) meta-titles "DR. WHO (M) SDN. Bhd" and "DR. WHO (S) PTE LTD" ("Meta-Title Signs") in the defendants' "www.drwho.com.my"  and "www.drwho.asia" websites amounted to trademark infringement of the DR. WHO Goods Mark.

It is established that to succeed in a claim for trademark infringement in Singapore, a claimant must show that the defendant(s) used, in a trademark sense in Singapore in the course of trade, a sign that is identical or similar to the registered mark in relation to goods or services identical or similar to those for which the mark is registered, without the claimant's consent. The claimant must also show a likelihood of confusion on the part of the public.

In this case, the high court singled out certain issues of concern for the use of allegedly infringing signs on the defendants' websites. 

The mere fact that consumers in Singapore may access the defendants' websites featuring allegedly infringing signs does not mean that these signs have been used in Singapore. The court will examine if there is direct encouragement or advertisement aimed at consumers in Singapore by examining relevant factors such as the following:

• The geographical areas to which the proprietor of the website is willing to supply goods
• The nature and size of the trader's business
• The characteristics of the relevant goods or services
• The numbers of visits made to the website by the consumers in the jurisdiction 

In this case, the high court found that the defendants' two websites targeted consumers in Singapore as the websites boasted of Singapore clientele. As such, the average consumer looking at the website would understand that the services in question were being offered to customers in Singapore. As a result, consumer confusion was likely and the defendants were liable for both trademark infringement and passing off.

Key takeaways

• Trademark rights are territorial in nature. As such, use of a sign outside Singapore cannot generally constitute an infringement under Singapore's trademark regime.
• It is important to establish that signs on websites that allegedly infringe a trademark have been used in Singapore. The mere fact that consumers in Singapore may access websites featuring these signs does not mean that these signs have been used in Singapore. 
• The courts search for something more, such as direct encouragement or advertisement aimed at these consumers. Relevant factors include the geographical areas to which the proprietor of the website is willing to supply the goods, the nature and size of the trader's business, the characteristics of the relevant goods or services and the number of visits made to the website by consumers in the jurisdiction.
• This case is also a reminder that while settlement and coexistence agreements/deeds (including those with territorial clauses) are a way to resolve potentially conflicting and overlapping uses of marks, parties must strictly comply with the terms. It is imperative to ensure that terms drafted adequately reflect and protect your rights and interests.

For further information and to discuss what this development might mean for you, please get in touch with your usual Baker McKenzie contact.

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