When IP disputes arise, it is important for the disputing parties to honour settlement agreements. Breaching a settlement agreement may bring about liability under IP law frameworks.
This case involved parties in the business of bottling water.
Dr. Who Waterworks Pte Ltd (the first claimant), a Singapore-incorporated company, was run by a Mr. and Mrs. Koh (the Kohs).
Dr. Who (M) Sdn Bhd (the first defendant) was set up in Malaysia by the second defendant, one Mr. Oo, as the first claimant’s manufacturing arm. The third defendant, Mr. Oo’s wife, was the first defendant’s shareholder (collectively, the Oos).
The first claimant registered the following marks in Singapore:
- Two identical word marks for “” under Classes 32 and 39 respectively ”; and
- (“Dr. Who Quatrefoil Motif Mark”) in Singapore under Classes 11 and 40.
As the parties eventually fell out, the Kohs sued the Oos in Malaysia. Mere days after the suit commenced, Mr. Oo registered in Malaysia under Class 32 – which was similar to the First Claimant’s Dr. Who Quatrefoil Motif Mark.
Eventually, the parties attempted to settle the dispute via a deed of settlement. In respect of the parties’ intellectual party rights, this deed stipulated that:
- The first claimant and the Kohs had the rights to use any “DR. WHO” marks in Singapore, as well as any other jurisdiction apart from Malaysia;
- The first defendant and the Oos had the rights to use any “DR. WHO” marks in Malaysia and any other jurisdiction apart from Singapore.
The claimants commenced the present proceedings after having found out that the first defendant had been using “DR. WHO” marks in Singapore. In particular, the first defendant had allegedly:
- Sold bottled water to at least five companies in Singapore, albeit without the Dr. Who marks;
- Displaying marks comparable to the claimants’ “DR. WHO” marks on its delivery vehicles;
- Making use of the name “DR. WHO (M) SDN BHD”, the Dr. Who Quatrefoil Motif Mark, the first defendant’s particulars and links to its Facebook page on the defendants’ websites www.drwho.com.my and www.drwho.asia ;
- Displaying the first defendant’s websites on commercial vehicles, driver’s attire, and packaging offered for sale in Singapore.
Among the heads of claim in the present proceedings were claims for trademark infringement and passing off.
The court’s decision
To establish infringement, the claimants had to prove that:
- The defendants made unauthorized use of signs similar to the claimant’s Dr. Who marks with regard to the relevant goods or services; and
- Such use attracted a likelihood of confusion.
The High Court held that mere access to the defendants’ allegedly infringing websites would not, in and of itself, constitute use of a trademark. Rather, the court must find direct encouragement or advertisement targeted at consumers in Singapore.
To this end, the court would examine the following non-exhaustive list of relevant factors:
- The geographical areas to which the websites’ owners supplied their goods through the websites;
- The nature and size of the business;
- The characteristics of the goods concerned;
- The number of visits to the website made by consumers of the goods in the relevant jurisdiction.
On the present facts, the defendants targeted consumers in Singapore by offering their goods to them through their website. Furthermore, the defendant’s websites even bragged about their Singapore customer base. As such, the average consumer would perceive that such services were available to customers in Singapore. Consequently, the risk of likelihood of confusion arose.
The court therefore found that the defendants were liable for both trademark infringement and passing off.
This case serves as a reminder to IP rights holders to honour the terms of their settlement, and that infringement of a trademark that was the subject of a dispute settled out of court can still occur post-settlement, especially if the infringement was a breach of the terms of settlement.
This article was first published in the IP Analysts column of Asia IP.