Navigating Trade Mark Infringement on the Internet

In the recent case of Dr Who Waterworks Pte Ltd v Dr Who (M) Sdn Bhd [2023] SGHC 156, the General Division of the Singapore High Court (“SGHC”) considered, among other things, a trade mark infringement claim involving online use of trade marks, including use within Uniform Resource Locators (“URLs”), website meta-titles, and website copyright notices.

I.  Factual Background

The case revolved around a dispute between various parties in the bottled water and water dispenser business, chief among them being Dr Who Waterworks Pte Ltd (“Claimant”) and Dr Who (M) Sdn Bhd (“Defendant”).

The Claimant was initially jointly operated by, among others, Mr Koh Tiong Gee (“Mr Koh”) and his wife (“the Kohs”). Mr Oo Tim Wee (“Mr Oo”) was subsequently invited to invest in the Claimant, and Mr Koh and Mr Oo eventually became equal shareholders of the Claimant.

The Defendant was incorporated on 11 April 2007 to operate as the manufacturing arm of the Claimant. The initial shareholders of the Defendant were the Kohs, Mr Oo and his wife (“the Oos”), as well as the Claimant. The Claimant then sold its shareholding to the remaining shareholders.

The business relationship between the Kohs and the Oos eventually broke down, and they entered into a settlement following a lawsuit in Malaysia. The settlement envisaged a parting of ways in terms of shareholdings and directorships in various Singaporean and Malaysian companies. The Kohs became the only shareholder and directors of the Claimant, among other companies, while the Oos became the only shareholders and directors of the Defendant.

The settlement also provided that the Claimant may own and use the “DR. WHO” brand in Singapore and any other jurisdiction except Malaysia. On the other hand, the Defendant may own and use the “DR. WHO” brand in Malaysia and any other jurisdiction except Singapore.

Consistent with the settlement, the Claimant held trade mark registrations for “DR. WHO”-related trade marks in Singapore, including a composite mark, “”.

The Claimant later discovered that the Defendant had been using the DR. WHO marks in Singapore, as further discussed below. As a result, the Claimant commenced proceedings against the Defendant for (among other claims) trademark infringement under section 27(2) of the Singapore Trade Marks Act 1998.

II.  Instances of Alleged Infringement

Noteworthy instances of infringement alleged by the Claimant included:

(a) Display of the URLs “www.drwho.com.my” and/or “www.drwho.asia” on commercial vehicles, driver’s attire, and packaging offered for sale in Singapore;

(b) Use of the infringing marks on the Defendant’s websites at “www.drwho.com.my” and/or “www.drwho.asia”, in particular:

(i) the DR.WHO composite mark;

(ii) within their copyright notice, i.e., “© DR. WHO (S) PTE LTD”; and

(iii) within their meta-titles, which are displayed on the tab of the internet browser, i.e., “DR. WHO (M) SDN. BHD.” and “DR. WHO (S) PTE LTD”; and

(c) Use of the DR. WHO composite mark and the “Dr Who Malaysia” sign on the Defendant’s Facebook page.

III.  Display of URLs

The SGHC held that the Defendant’s display of the URLs “www.drwho.com.my” or “www.drwho.asia” on commercial vehicles, driver’s attire, and packaging amounted to trade mark infringement.

One of the salient issues which the SGHC had to address was whether the URLs were similar to the Claimant’s “DR. WHO” mark. In this regard, the SGHC made the following findings:

(a) The second-level domain of the URLs, i.e., "drwho", was the dominant component because it identified the "specific and unique administrative owner" associated with the URLs; and

(b) The URLs were similar to the “DR. WHO” mark despite the differences occasioned by the top-level domain of the former, i.e., ".com.my" and ".asia".

The SGHC also observed that the mere addition of a top-level domain or the use of a different top-level domain will typically be insufficient to render a sign comprising a website address dissimilar to a registered mark (assuming that such similarity is already established with the second-level domain).

Additionally, the SGHC held that a likelihood of confusion would arise on the part of the average consumer.

With respect to the Defendant’s use of “www.drwho.com.my” on commercial vehicles and driver’s attire in Singapore, the SGHC held that the relevant public would be under the impression that the goods which are advertised under, among others, the sign comprising the “www.drwho.com.my” URL originate from the Malaysian branch of the undertaking operating under the “DR.WHO” mark.

As for the Defendant’s packaging of products offered for sale in Singapore, which incorporate “www.drwho.asia”, the SGHC held that the average consumer would have understood the source of the products to be the undertaking using the sign “www.drwho.asia”, and would likely have confused this undertaking with the proprietor of the “DR. WHO” mark. Further, the SGHC held that if consumers entered the website at “www.drwho.asia”, the reference on the home page to “clientele around Malaysia and Singapore” would have reinforced the incorrect impression that the Defendant was linked to the proprietor of the “DR. WHO” mark.

IV.  Use on Defendant’s Websites

With regard to the alleged instances of infringing use on the Defendant’s websites at “www.drwho.com.my” and “www.drwho.asia”, the SGHC had to determine whether such use amounted to use in a “trade mark sense” within Singapore.

Regarding the issue of use in Singapore, where the infringing marks are found on websites, the Claimant would need to prove that these websites targeted consumers in Singapore.

The SGHC held that the Defendant’s websites targeted consumers in Singapore because both contained text stating that the Defendant was "providing OEM solutions for clientele around Malaysia and Singapore", which appears to invite and boast of clientele in Singapore.

Further, while the SGHC accepted that the country code top-level domain “.my” may prima facie indicate to the average consumer that the website is targeted at consumers in Malaysia, such preliminary notions would be dispelled by the fact that the homepage alludes to clientele in Malaysia as well as in Singapore. Conversely, the top-level domain “.asia” would further support the view that the Defendant operates in both Singapore and Malaysia.

Based on the reasons above, the SGHC regarded use of the allegedly infringing marks on the Defendant’s websites as use within Singapore.

V.  Meta-Titles

Another issue which the SGHC had to consider was whether the allegedly infringing marks were used in a “trade mark sense”.

With regard to the meta-titles of both websites, the SGHC found in the affirmative.

The SGHC held that meta-titles serve as titles of a website, and as such, denote the trade origin of the goods or services provided by the website. Further, a DR. WHO composite mark headlines the homepages of both websites, and would have been viewed together with the meta-titles.

Accordingly, the SGHC held that these signs would have been understood as being used in relation to the goods offered on those websites. This would be sufficient to constitute use in a trade mark sense as they indicated the source of such goods. As a result, trade mark infringement was made out.

 VI.  Copyright Notice

However, with respect to the copyright notice on the Defendant’s websites, i.e., “© DR. WHO (S) PTE LTD”, the SGHC held that there was no use in a trade mark sense.

In this regard, the SGHC observed that the copyright notice was used to declare that ownership over the copyright in the websites’ content belonged to the entity “DR. WHO (S) PTE LTD”, which does not, alone, speak to the trade origin of any goods. In particular, the work in which copyright subsists is distinct from the goods in relation to which the infringing marks were used.

Accordingly, trade mark infringement was not made out based on the copyright notice.

VII.  Facebook Page

As for the Defendant’s Facebook page, the SGHC held there was no trade mark infringement.

Similar to its analysis relating to the Defendant’s websites, the SGHC had to consider whether there had been use of infringing marks in a “trade mark sense” within Singapore. The SGHC held that there was no such use, considering that there was no evidence of content on the Facebook page targeting consumers in Singapore.

On the contrary, the SGHC found that the content of the Facebook page only made references to Malaysia and do not appear to market or advertise any goods to consumers in Singapore. Further, there was little evidence showing that the Facebook page was brought to the attention of consumers in Singapore, unlike the Defendant’s websites which were reflected on their packaging and commercial vehicles in Singapore.

Further, while the SGHC noted that the websites contained hyperlinks to the Defendant’s Facebook page, it was held that this did not mean the Facebook page targeted consumers in Singapore. In particular, the SGHC observed that:

(a)  The hyperlinks took the form of a small icon placed on the websites' banner, which indicated that only a small proportion of users in Singapore visiting the websites would navigate to the Facebook page; and

(b) The Facebook page itself did not directly encourage or advertise the Defendant's goods to consumers in Singapore.

Given that the Facebook page did not target consumers in Singapore, the SGHC found that there was no trade mark use in Singapore. As such, trade mark infringement was not made out in relation to the Defendant’s Facebook page.

VIII.   Comments

This case provides some useful insight as to how the Singapore courts would approach trade mark infringement in an online context, specifically where it concerns websites, domain names, and social media pages.

In particular, it should be noted that the SGHC took the view that, because meta-titles serve as titles of a website, “they denote the trade origin of the goods or services provided by the website”. Accordingly, such meta-titles can potentially be understood as “being used in relation to the goods offered on those websites” and therefore “sufficient to constitute use of the signs in a trade mark sense as they indicated the source of those goods”. For this reason, meta-titles could be a source of infringement risk.

The above underscores the distinction with situations where the sign used may not be apparent to users, such as in the case of meta-tags (which comprise keywords embedded in the source code of a website and are not displayed on the website itself), where the UK Court of Appeal in the case of Reed Executive v Reed Business Information & Ors [2004] RPC 40 recognised that there may be difficulties in finding that meta-tags can denote trade origin, particularly because meta-tags are invisible to visitors and would only be read by computers.

It is also worth noting that, for the purposes of determining whether a website is targeted at consumers in Singapore, the use of a top-level domain comprising a foreign country code (e.g., .my) may not necessarily lead to a conclusion that the website was only targeted at consumers in that country. The SGHC demonstrated that it may take a more substantive view of the matter, examining the contents of the homepage accessible via the top-level domain. In this instance, it was held that while the top-level domain “.my” may have indicated to the average consumer in Singapore that the “www.drwho.com.my” website was prima facie targeted at consumers in Malaysia, the fact that the home page alludes to clientele in Singapore and Malaysia would have dispelled such preliminary notions. As such, the consumer would have understood the Defendant to be willing to sell their goods to Singapore consumers, thereby permitting a finding of trade mark infringement.

 

AUTHOR INFORMATION

Lam Chung Nian is a Partner and Head of the Intellectual Property, Technology & Data Group at WongPartnership LLP.
Email: chungnian.lam@wongpartnership.com

Megan Low is an Associate at WongPartnership LLP.
Email: megan.low@wongpartnership.com