Case Details
- Citation: [2019] SGIPOS 12
- Court: Intellectual Property Office of Singapore
- Date: 2019-08-02
- Judges: Principal Assistant Registrar Mark Lim Fung Chian
- Plaintiff/Applicant: Consorzio del Formaggio Parmigiano Reggiano
- Defendant/Respondent: U.S. Dairy Export Council
- Legal Areas: Geographical Indications – Interlocutory Hearing
- Statutes Referenced: Geographical Indications Act, Geographical Indications Act 2014, Trade Marks Act
- Cases Cited: None
- Judgment Length: 10 pages, 4,265 words
Summary
This case concerns an application by the U.S. Dairy Export Council ("the Opponent") for an extension of time to file a notice of opposition and supporting evidence against the registration of the geographical indication "Parmigiano Reggiano" by Consorzio del Formaggio Parmigiano Reggiano ("the Applicant"). The Intellectual Property Office of Singapore ("IPOS") rejected the Opponent's application for an extension, finding that the Opponent had failed to show good and sufficient reason for the extension as required under the Geographical Indications Rules 2019.
What Were the Facts of This Case?
The Applicant, an association of Italian cheese producers, applied to register the geographical indication "Parmigiano Reggiano" for a hard cheese made from milk of cows reared in a defined geographical area in Italy. The application was accepted and published for opposition purposes on 10 May 2019, with a deadline of 21 June 2019 to file any notice of opposition and supporting evidence.
On 10 June 2019, the Opponent, a U.S. dairy industry organization, requested a 6-month extension of time to file its notice of opposition and evidence. The Opponent stated that it had only recently become aware of the publication of the application, its agent had just been appointed, and it needed more time to prepare its opposition.
The Registrar expressed a preliminary view that the Opponent had failed to show good and sufficient reason for the extension, as the "Parmigiano Reggiano" geographical indication was already publicly known as part of the list of 196 geographical indications of interest to the European Union under the EU-Singapore Free Trade Agreement (EUSFTA) since 2013. The Registrar also noted that granting an extension could potentially delay the coming into force of the EUSFTA and associated benefits to Singapore companies.
What Were the Key Legal Issues?
The key legal issue was whether the Opponent had shown "good and sufficient reason" under Rule 30(5) of the Geographical Indications Rules 2019 to justify the requested extension of time to file its notice of opposition and supporting evidence.
Additionally, the Registrar raised concerns about the Opponent's grounds of opposition, noting that the Opponent's actual objection appeared to be to the "common name" for "Parmigiano Reggiano" rather than the geographical indication itself, which would not be a valid ground of opposition under the Geographical Indications Act 2014.
How Did the Court Analyse the Issues?
The Registrar examined the background and purpose of the Geographical Indications Act and Rules, which were enacted to facilitate the implementation of the EUSFTA. The Registrar noted that the list of 196 geographical indications of interest to the EU, including "Parmigiano Reggiano", had been publicly available since 2013, providing ample time for the Opponent to prepare any opposition.
The Registrar also highlighted the truncated timelines for geographical indication opposition proceedings compared to trademark oppositions, with opponents given only 6 weeks to file both the notice of opposition and supporting evidence. Granting an extension in this case could therefore potentially delay the coming into force of the EUSFTA and associated benefits to Singapore businesses.
Additionally, the Registrar expressed skepticism about the Opponent's grounds of opposition, noting that its objection appeared to be to the "common name" for "Parmigiano Reggiano" rather than the geographical indication itself, which would not be a valid ground of opposition under the Act.
What Was the Outcome?
The Registrar rejected the Opponent's application for an extension of time, finding that the Opponent had failed to show the "good and sufficient reason" required under the Rules. The Opponent was therefore required to file its notice of opposition and supporting evidence by the original deadline of 21 June 2019.
Why Does This Case Matter?
This case provides important guidance on the application of the Geographical Indications Act and Rules, particularly in relation to the truncated timelines and limited grounds for opposition compared to trademark proceedings. It highlights the close link between the Act/Rules and Singapore's obligations under the EUSFTA, and the need to balance the interests of geographical indication applicants and potential opponents.
The case also suggests that the Registrar will closely scrutinize the grounds of opposition raised by parties, and may reject arguments that do not align with the statutory framework. This underscores the importance for opponents to carefully consider and articulate valid grounds of opposition under the Act.
More broadly, this decision reinforces the Registrar's role in ensuring the efficient and timely administration of the geographical indications regime in Singapore, in line with the country's international commitments. Practitioners should be mindful of the strict deadlines and limited extension possibilities when advising clients on geographical indication matters.
Legislation Referenced
- Geographical Indications Act
- Geographical Indications Act 2014
- Geographical Indications Rules 2019
- Trade Marks Act
Cases Cited
- None
Source Documents
This article analyses [2019] SGIPOS 12 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.