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2022 MarsdenLR 1233
HIGH COURT MALAYA JOHOR BAHRU
DR WHO (M) SDN BHD – Appellant
Versus
DR WHO GLOBAL WATERTECH (S) PTE LTD & ORS – Respondent
[Suit No: JA-22IP-1-08/2020]
A plaintiff in a passing-off action does not need to prove actual damages but only a probability of damage to establish a sustainable claim.
Headnote:(A) Rules of Court, 2012 – O 18 r 19(1) – Legal Principles on striking out pleadings – The court may strike out a pleading only when it discloses no reasonable cause of action or is scandalous, frivolous, or vexatious. The plaintiffs' claim of conspiracy must establish agreement, intent to injure, and resulting damage. (Paras 17-26)
Facts of the case:
The plaintiffs alleged that the defendants engaged in conspiracy regarding the use of the 'DR. WHO' trademark without permission, leading to damage to their rights. (Paras 5-12)
Findings of Court:
The court found that the plaintiffs' allegations were sufficiently detailed and sustainable, warranting a full trial. (Paras 24-28)
Issues
: Whether the plaintiffs adequately alleged a conspiracy and established potential damages. (Paras 22, 26)
Ratio Decidendi:
The court emphasized the requirement for allegations to demonstrate agreement and potential damages, deciding that the case could proceed to trial. (Paras 22-28)
Result:
The application to strike out the plaintiffs' claims was dismissed with costs.
JUDGMENT
[Enclosures 139]
Background Facts
[1] As a background, on 19 February 1998 a company known as Dr Who Waterworks Pte Ltd ("Waterworks") was incorporated in Singapore.
[2] In or about November 2002, the 2nd Plaintiff became the substantial shareholder and director of the Waterworks whereas the 8th Defendant subsequently became one of the shareholders and directors of the Waterworks since 2004.
[3] The 8th Defendant and the 2nd Plaintiff had further incorporated the following companies ("Dr Who Group of Companies") in Singapore to expand the company's businesses:
(a) the New Global Watertech Pte Ltd;
(b) the Dr Who Laboratories (S) Pte Ltd;
(c) the D' Choice Pte Ltd; and
(d) the 1st Defendant.
[4] The 2nd Plaintiff also incorporated the 1st Plaintiff company in Malaysia as to produce bottled drinking and gallon water. The 1st Plaintiff, thereafter supplied bottled drinking and gallon water to support the business of the Dr Who Group of Companies using the brand name of "DR. WHO".
[5] In view of the differences arose, a deed of settlement ("Deed") dated 13 February 2017 was executed by the following parties as a full and final settlement to dispose of all claims, disputes and differences between the parties prior to the date of the Deed:
(a) the 2nd Plaintiff;
(b) Low Siew Eng (the 2nd Plaintiff's wife);
(c) the 1st Plaintiff;
(d) the 8th Defendant;
(e) the 9th Defendant;
(f) the Waterworks;
(g) the New Global Watertech Pte Ltd;
(h) the Dr Who Laboratories (S) Pte Ltd;
(i) the D' Choice Pte Ltd; and
(j) the 1st Defendant.
[6] Due to the mutual co-existence rights agreed in the Deed, the 1st Plaintiff, Low Siew Eng and the 2nd Plaintiff are entitled to own and use the "DR. WHO" marks in Malaysia at the sole discretion of the 2nd Plaintiff.
[7] The 2nd Plaintiff is the registered owner for trademarks of "DR. WHO" registered in Malaysia and has granted to the 1st Plaintiff a nonexclusive license to carry on its business with the "DR. WHO" trademark in Malaysia.
[8] Sometime in August 2019, the 2nd Plaintiff found that the 1st Defendant, which the 2nd Plaintiff alleged it under the direction and control of the 8th and 9th Defendants, was ordering bottled drinking water from the 2nd Defendant in Malaysia using the "DR. WHO" marks.
[9] The 1st Plaintiff carried out investigations and discovered that the 2nd Defendant was producing bottled drinking water and supplying the same to the 1st Defendant in Singapore using the "DR. WHO" marks.
[10] The 2nd Plaintiff also claimed that the 2nd Defendant had entered into the Distribution Agreement dated 10 June 2019 with the 1st Defendant which the 2nd Plaintiff alleged it under the direction and control of the 8th and 9th Defendants.
[11] Not only that, the 2nd Plaintiff also discovered that the labels which displayed the "DR. WHO" marks were produced by the 3rd, 4th and 6th Defendants. The labels then sent to the 2nd Defendant which would fix the labels which displayed the "DR. WHO" marks on the bottled drinking water to the account of the 1st Defendant. The 2nd Defendant thereafter would pack the bottled drinking water in carton boxes which displayed the "DR. WHO" marks which were manufactured by the 5th and 7th Defendants for which the orders were placed by the 2nd Defendant in pursuant to the Distribution Agreement and to the account of the 1st Defendant.
[12] In view of the above, the Plaintiffs filed the Writ of Summons and Statement of Claim dated 15 August 2020 against the 1st to 7th Defendants.
[13] After the filing of the Writ of Summons and Statement of Claim, the 2nd Plaintiff found that the 4th Defendant, upon request of the 1st, 2nd and 8th Defendants had been continuing to supply and deliver the labels to the 1st Defendant even after receiving the Plaintiffs' letter of demand dated 31 July 2020.
[14] The Plaintiff then applied to amend the Statement of Claim as to include the 8th and 9th Defendants in this suit and the application was granted on 8 November 2020. Nonetheless, the
