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In the GENERAL DIVISION OF

THE high court of the republic of singapore
[2023] SGHC 156
Suit No 600 of 2020 (consolidated with Suit No 96 of 2021)
Between
1.
Dr. Who Waterworks Pte Ltd (formerly known as Cana Services Pte Ltd)
2.
Dr. Who Global Watertech (S) Pte Ltd
3.
Dr. Who Laboratories (S) Pte Ltd (formerly known as New Global Fluid Engineering & Machinery Pte Ltd)
Plaintiffs
And
1.
Dr. Who (M) Sdn Bhd
2.
Oo Tim Wee
3.
Low Siew Eng
4.
Dynamic Watermedia Pte Ltd (formerly known as Dr. Who (S) Pte Ltd)
Defendants
And Between
1.
Dr. Who (M) Sdn Bhd
2.
Oo Tim Wee
3.
Low Siew Eng
4.
Dynamic Watermedia Pte Ltd (formerly known as Dr. Who (S) Pte Ltd)
Plaintiffs in Counterclaim
And
1.
Dr. Who Waterworks Pte Ltd (formerly known as Cana Services Pte Ltd)
2.
Dr. Who Global Watertech (S) Pte Ltd
3.
Dr. Who Laboratories (S) Pte Ltd (formerly known as New Global Fluid Engineering & Machinery Pte Ltd)
4.
Koh Tiong Gee (Xu Zhongyi)
5.
Tan Kim Peng
Defendants in Counterclaim
judgment
[Intellectual Property — Trade marks and trade names — Infringement]
[Intellectual Property — Trade marks and trade names — Passing off]
[Contract — Breach]
[Tort — Conspiracy]
[Tort — Detinue]

This judgment is subject to final editorial corrections approved by the court and/or redaction pursuant to the publisher’s duty in compliance with the law, for publication in LawNet and/or the Singapore Law Reports.
Dr Who Waterworks Pte Ltd and others

v

Dr Who (M) Sdn Bhd and others
[2023] SGHC 156
General Division of the High Court — Suit No 600 of 2020 (consolidated with Suit No 96 of 2021)
Dedar Singh Gill J
6–8 September, 14 November 2022
26 May 2023 Judgment reserved.
Dedar Singh Gill J:
1 This case involves a multiplicity of claims and counterclaims spanning intellectual property, contract and tort. They trace their origins to the acrimonious breakdown of the commercial relationship which once existed between the parties and the acts which followed.
Facts
The parties
2 The first plaintiff is a Singapore company currently known as Dr. Who Waterworks Pte Ltd. Incorporated on 19 February 1998, it was initially named Cana Services Pte Ltd before it took on its present name on 26 September 2002. While parties disagree on the nature of the business which the first plaintiff engaged in prior to the change in its name, it is not disputed that the first plaintiff was engaged in the supply of 5-gallon bottled water and the leasing and placement of water dispensers following its name change. At that point in 2002, the company was jointly operated by Mr Koh Tiong Gee (“Mr Koh”), his wife, Ms Tan Kim Peng (“Mdm Tan”), and Mr Benji Ng Ser Kwei (“Mr Ng”). The first plaintiff expanded its business in 2003 to include the provision of “bottles of water with label design and personalised branding”. For simplicity, I shall refer to such bottles of water as “bottled water bearing the customer’s mark”.
3 The second plaintiff, Dr. Who Global Watertech (S) Pte Ltd, was incorporated by Mr Koh on 27 June 2007. It engaged in the business of supplying and distributing bottled water and took over the segment of the first plaintiff’s business for the provision of bottled water bearing the customer’s mark.
4 The third plaintiff, Dr. Who Laboratories (S) Pte Ltd, was incorporated on 16 April 2008 by Mr Koh for the purposes of research and development. This entity subsequently entered into the direct piping sector to support the plaintiffs’ other businesses.
5 The first defendant, Dr. Who (M) Sdn Bhd, was incorporated in Malaysia on 11 April 2007 by the second defendant, Mr Oo Tim Wee (“Mr Oo”). According to its business profile with the Companies Commission of Malaysia, the first defendant engages in the business of dealing in mineral and aerated water, and the provision of “integrated logistics services”. Mr Oo, Mdm Low Siew Eng (“Mdm Low”) (who is the third defendant), Mr Koh, Mdm Tan and the first plaintiff were the initial shareholders of the first defendant. The first plaintiff subsequently sold its shareholding in the first defendant to the remaining shareholders.
6 The fourth defendant, Dr. Who (S) Pte Ltd, was incorporated in Singapore by the second and third defendants on 17 July 2019. According to its profile provided by the Accounting and Corporate Regulatory Authority (“ACRA”), the fourth defendant’s activities include the “wholesale trade of a variety of goods without a dominant product”, and “other transportation support activities”. Mr Oo and Mdm Low were the only directors of the fourth defendant at the time of its incorporation.
7 The four defendants and three plaintiffs above are correspondingly the four plaintiffs and three defendants in the counterclaims, in the same order. For the purposes of the counterclaims, Mr Koh and Mdm Tan are joined as the fourth and fifth defendants respectively.
8 Two other companies, D’Choice Pte Ltd (“D’Choice”) and New Global Watertech Pte Ltd (“New Global”), were incorporated by Mr Koh in 2007 for the purposes of corporate restructuring. They are however not parties to these proceedings as they ceased business activities in 2017.
Background to the dispute
The early years of the parties’ commercial relationship
9 I begin with the change in the first plaintiff’s name in September 2002. Mr Koh, who was serving as the general manager of the first plaintiff at the time, testified that he was the “motivator and main decision-maker to all matters concerning the business of the [first] plaintiff”. This included the change in the company’s name. According to Mr Koh, he conceived of the name “DR. WHO” by himself sometime before 26 September 2002. He states that he thought of the prefix “DR” as it harkened to the idea of “the usual doctor’s advice to drink plenty of water”, and the word “WHO” as the abbreviated form of the “World Health Organisation”. The defendants dispute this fact, insisting instead that the name “DR. WHO” was the creation of the prior owners of the first plaintiff before Mr Koh joined as a shareholder.
10 In any case, following this change, Mr Koh became acquainted with Mr Oo through a mutual friend. At that time, Mr Oo was operating a Malaysian company, APlus Water & System Sdn Bhd (“APlus Water”), with his wife, Mdm Low. The company manufactured and supplied bottled water and dispenser services. The first plaintiff then decided to engage APlus Water for their supply and manufacturing services.
11 According to Mr Oo, he was invited by Mr Chan Eng Guan (“Mr Chan”) to invest in the first plaintiff and to become a director in November 2002. Mr Oo agreed. Mr Chan was himself a shareholder and director of the first plaintiff but operated at all times as a sleeping director.
12 As previously mentioned, the first plaintiff expanded its business in 2003 to include the provision of bottled water bearing the customer’s mark. This comprised the supply of bottled water in various sizes (ie, ranging from 250ml to 1.5l bottles). This is illustrated by the following examples:
13 Mr Koh asserts that he was solely responsible for the genesis of this new business concept. APlus Water assisted in the implementation of this business concept by manufacturing and supplying the bottled water bearing the customer’s mark, a role which it undertook from November 2002 to December 2011. This service was later transferred from APlus Water to another company owned by Mr Oo and his brother, APlus Food & Beverage Sdn Bhd (“APlus F&B”).
14 In 2003, several shareholders of the first plaintiff, including Mr Ng, relinquished their shares in the company. Pursuant to an agreement dated 15 March 2004, Mr Koh acquired a majority shareholding in the first plaintiff after Mr Oo and Mr Chan each transferred a portion of their shareholding to him. On 31 March 2004, Mr Chan exited the first plaintiff, leaving Mr Oo and Mr Koh as equal shareholders. Mr Koh was also appointed a director of the first plaintiff in March 2004, a role which he was hitherto unable to take up due to employment disputes with his previous employer.
15 On 17 August 2004, the first plaintiff registered the mark “DR. WHO” in the following classes in Singapore:
Trade Mark No.
Mark
Class
Goods/Services
T0413722F
39
Delivery of bottled water to homes and offices; water supply services
T0413721H
32
Bottled water [not for medical purposes]; oxygenated water; drinking water; aerated water; waters [beverages] other than for medical purposes
I refer to the mark registered in Class 39 as the “DR. WHO services mark” and the mark registered in Class 32 as the “DR. WHO goods mark” (collectively referred to as the “DR. WHO word marks”).
16 Mr Koh and Mr Oo each assert that they were solely responsible for the registration of the DR. WHO word marks. According to Mr Koh, Mr Oo had nothing to do with the registration of the DR. WHO word marks, which were registered on Mr Koh’s sole instructions. Mr Oo, on the other hand, testifies that it was he who decided to register the marks.
17 The first defendant was incorporated in Malaysia on 11 April 2007 to operate as the manufacturing arm of the first plaintiff. According to Mr Koh, this was done as a preparatory step to distance the first plaintiff from its existing suppliers, APlus Water and APlus F&B, due to ongoing disputes between Mr Oo and his brother.
18 On 29 May 2007, a trade mark was registered in Malaysia in Mr Oo’s name. This trade mark bore the words “DR. WHO” with two decorative “swooshes” at the bottom-right corner of the words (“the DR. WHO swoosh mark”).
Trade Mark No
Mark
Class
Goods
07009932
32
Mineral water; drinking water; oxygenated water (for non-medical use); reverse osmosis water; mineralized water (for non-medical use) and aerated water; fruit drinks and fruit juices; vegetable juices; syrups and other preparations (of non-alcoholic) for making beverages; instant beverage powders for preparations of non-alcoholic drinks and beverages
19 Mr Koh’s evidence is that he had created the DR. WHO swoosh mark by himself, and that he and Mdm Tan had agreed that the Malaysia-registered mark was to be registered in the name of the first defendant. However, they only discovered that the DR. WHO swoosh mark was registered in Mr Oo’s name sometime in 2016. Conversely, Mr Oo testifies that Mr Koh was at all times fully aware that the mark was registered in his name.
20 From 2007 to 2008, four companies were incorporated for the purposes of the corporate restructuring and expansion of the first plaintiff’s business: the second plaintiff, D’Choice, New Global and the third plaintiff. Pursuant to the restructuring exercise, the first plaintiff was made the holding company of these preceding companies (collectively, “the Dr. Who Group”). The first plaintiff continued its business of supplying 5-gallon bottled water and bottled water bearing the customer’s mark. It placed orders for bottled water bearing the customer’s mark with New Global and APlus F&B, while supplying the second plaintiff with bottled water, dispenser services and bottled water bearing the customer’s mark. Sometime in January 2012, the first plaintiff began ordering bottled water bearing the customer’s mark from the first defendant and ceased orders from APlus F&B.
21 In 2012, Mr Koh engaged a brand-strategy consultant. This resulted in the development of the slogan “Bringing smiles to your world” (“the Slogan”) and a trade mark based on the words “DR. WHO”. The mark comprised the term “DR. WHO” with four water droplets in a quatrefoil shape at its top-right corner (“the DR. WHO quatrefoil device mark”). The mark was registered in the first plaintiff’s name in Singapore on 19 October 2012 in the following classes:
Trade Mark No.
Mark
Class
Goods/Services
T1215741I
11
Water treatment units
40
Treatment of water
The breakdown in the parties’ relationship – the First Malaysian Suit and the Deed
22 In 2013, cracks began to form in the business relationship between Mr Koh and Mdm Tan (“the Kohs”) and Mr Oo and Mdm Low (“the Oos”). The deterioration in relations was precipitated by disputes over, inter alia, each party’s remuneration and the Kohs’ employment of their relatives. This culminated in the initiation of a suit by the Kohs against the Oos in Malaysia on 6 September 2016 (“the First Malaysian Suit”). The suit involved the claim by the Kohs that the Oos had wrongfully made unilateral attempts to increase the salary which Mdm Low received from the first defendant.
23 Three days after the commencement of the First Malaysian Suit, on 9 September 2016, Mr Oo registered in Malaysia a mark containing the words “DR. WHO” with the quatrefoil-water droplet design element affixed at the top-right hand corner (“the Malaysian DR. WHO quatrefoil device mark”):
Trade Mark No.
Mark
Class
Goods/Services
2016066646
32
Mineral water; flavoured mineral water; mineralized water (for non-medical use); drinking water; flavoured waters; oxygenated water (for non-medical use); reverse osmosis water; aerated water; energy drinks
Mr Koh’s evidence is that, at the time, he was unaware that Mr Oo had registered the mark.
24 The Kohs and the Oos were eventually able to reach a settlement regarding the First Malaysian Suit and recorded the terms of their agreement in a deed of settlement dated 13 February 2017 (“the Deed”). The parties to the Deed were, on one hand, the Dr. Who Group and the Kohs; and on the other, the first defendant and the Oos. The Deed essentially envisaged a parting of ways between the Oos and the Kohs in terms of the shareholdings and directorships they each held in the Singaporean and Malaysian companies. This was due to, as the recital of the Deed termed it, “irreconcilable disputes and differences” between the parties. Pursuant to the Deed, the Kohs became the only shareholders and directors of the first to third plaintiffs, New Global and D’Choice, while the Oos became the only shareholders and directors of the first defendant.
25 The Deed also governed the intellectual property held by the respective companies. Pertinently, Clause 2.3 of the Deed dealt with the “rights of ownership of “DR. WHO” marks”, and provided as follows:
2.3 Exclusive Rights of ownership of “DR. WHO” marks in Singapore, Malaysia and in other jurisdictions and Mutual Co-existence Rights
(1) The mark “DR. WHO” is a trademark registered in Singapore and Malaysia. The Kohs and [the Dr. Who Group (including the first plaintiff)] shall be entitled to own and use the mark “DR. WHO” in Singapore and in any other jurisdiction (apart from Malaysia) in the sole discretion of the Kohs, and the Oos and [the first defendant] shall be entitled to own and use the mark “DR. WHO” in Malaysia and in any other jurisdiction (apart from Singapore) in the discretion of the Oos.
(2) Neither party shall use the DR. WHO trademark in the other Party’s Country without the prior written approval of each party.
(3) [Mr Oo, Mdm Low and/or the first defendant] shall not, without the prior written approval of [the Dr. Who Group] whether directly or indirectly, supply or caused to be supplied bottled water to any other person or entity in Singapore bearing or under the “DR. WHO” mark registered in Malaysia and/or by way of passing off.
(4) [Mdm Tan, Mr Koh and/or the Dr. Who Group] shall not, without the prior written approval of [the first defendant] whether directly or indirectly, supply or caused to be supplied bottled water to any other person or entity in Malaysia bearing or under the “DR. WHO” mark registered in Singapore and/or by way of passing off.
(5) The Restraint Clauses in Sub-clauses (3) and (4) above are not intended to hinder competition but are necessary for the purpose of protecting [the Dr. Who Group] and [the first defendant’s] business, intellectual property and goodwill.
The events following the Deed
26 After the settlement, the plaintiffs continued to place orders for bottled water bearing the customer’s mark from the first defendant.
27 On 29 October 2018, Mr Oo registered in Malaysia two marks that comprised the words “DR. WHO” in Classes 16 and 35 respectively (collectively, “the Malaysian DR. WHO word marks”):
Trade Mark No
Mark
Class
Goods/Services
2018072778
16
Advertising posters; advertising publications; photographs; paper cards (blank) for recording data; envelopes; business cards; paper bags; packaging materials made of cardboard; paper boxes; printed forms; booklets; books; leaflets; letterhead paper; paper for letterhead paper; writing paper; note pads; pamphlets; leaflets; stickers; paper tags; user manuals (in the form of printed matter); company magazines; catalogues; newsletters; periodicals; brochures; gift stationery
2018072780
35
Advertising by mail order; online advertisement on a computer network; presentation of goods on communication media; business management; business administration; retail & franchise services; business merchandising display services; business advisory services; the bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise website in the global communications network
28 Sometime in late 2018, Mr Koh came to learn from one of the Dr. Who Group’s customers that the first defendant was supplying bottled water bearing the customer’s mark to a competitor of the plaintiffs, Global Water Solutions Pte Ltd (“Global Water”). The first plaintiff decided to engage DP Quest Investigation Consultancy Pte Ltd (“DP Quest”) to conduct surveillance on the first defendant’s activities in Singapore.
29 DP Quest’s findings were contained in a report dated 6 December 2019 (“the PI Report”). The report made the following findings:
(a) On 28 March 2019, a truck with vehicle registration number JTF 7514 bearing a trailer (“Vehicle A”) was seen driving into the first plaintiff’s premises at 24 Chin Bee Road. As evident from the photograph below, on Vehicle A was the sign “DR. WHO” with four water droplets in a quatrefoil design on its top right corner (“the DR. WHO quatrefoil device sign”), followed by the first defendant’s contact details, e-mail “drwho@drwho.com.my” and website “www.drwho.com.my”.
(b) On 10 April 2019, Vehicle A was seen at Global Water’s premises at 1 Venture Avenue (“Global Water’s old premises”). It contained as its cargo empty bottles with labels bearing either the words “Hydr8” or “Royal”. There were no clear photographs provided of the allegedly infringing signs on Vehicle A on this occasion.
(c) On 7 May 2019, a truck with vehicle registration number JRU 617 (“Vehicle B”) was seen at Global Water’s old premises. According to the PI Report, the first defendant’s name, the “Dr WHO logo and Malaysian contact details” were displayed on the truck, although there were no photographs showing that these allegedly infringing signs were clearly displayed on Vehicle B.
(d) On 27 May 2019, Vehicle A was seen picking up boxes containing empty bottles with the label “Hydr8” from Global Water’s old premises. Vehicle A bore the same allegedly infringing signs as it did when it was sighted on 28 March 2019. This is evidenced by the following photograph provided by the PI Report.