Case Details
- Citation: Consorzio del Formaggio Parmigiano Reggiano v Fonterra Brands (Singapore) Pte. Ltd. [2022] SGIPOS 11
- Court: Intellectual Property Office of Singapore
- Date: 2022-07-12
- Judges: Principal Assistant Registrar Sandy Widjaja
- Plaintiff/Applicant: Consorzio del Formaggio Parmigiano Reggiano
- Defendant/Respondent: Fonterra Brands (Singapore) Pte. Ltd.
- Legal Areas: Geographical Indications – Opposition to qualification of rights
- Statutes Referenced: Evidence Act, Evidence Act 1893, Interpretation Act, Public Consultation on Changes to be made to the Geographical Indications Act, The new Geographical Indications Act 2014, The relevant sections of the Act, Trade Marks Act
- Cases Cited: [2017] SGHC 230, [2019] SGCA 50, [2020] SGCA 43, [2021] SGHC 198, [2022] SGIPOS 7, [2022] SGIPOS 11, [2022] SGIPOS 7
- Judgment Length: 29 pages, 7,874 words
Summary
This case involves an opposition by the Consorzio del Formaggio Parmigiano Reggiano (the "Registrant/Opponent") to a request for qualification filed by Fonterra Brands (Singapore) Pte. Ltd. (the "Requester") in relation to the registered geographical indication "Parmigiano Reggiano" for cheese. The Requester sought to qualify that the protection of the geographical indication should not extend to the use of the term "Parmesan", arguing that "Parmesan" is not a translation of "Parmigiano Reggiano". The Registrant/Opponent opposed this, contending that "Parmesan" is indeed a translation of "Parmigiano Reggiano". The Intellectual Property Office of Singapore had to determine whether the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano" under the Geographical Indications Act 2014.
What Were the Facts of This Case?
The Registered Geographical Indication No. 50201900057U for "Parmigiano Reggiano" for "cheese" was formally registered on 22 June 2019 in the name of the Consorzio del Formaggio Parmigiano Reggiano (the "Registrant/Opponent"). The Registrant/Opponent is a voluntary consortium of Parmigiano Reggiano cheese producers that was established in 1934 in Italy and is tasked by the Italian government with protecting and promoting the "Parmigiano Reggiano" cheese.
Fonterra Brands (Singapore) Pte Ltd (the "Requester") is a wholly owned subsidiary of the New Zealand-based multinational dairy cooperative Fonterra Co-operative Group Limited. On 16 September 2019, the Requester filed a request for qualification in respect of the Registered Geographical Indication, seeking that the protection of the geographical indication "Parmigiano Reggiano" should not extend to the use of the term "Parmesan".
The Registrant/Opponent then filed an opposition to the Requester's request for qualification, arguing that "Parmesan" is indeed a translation of "Parmigiano Reggiano".
What Were the Key Legal Issues?
The key legal issue in this case was whether the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano" under the Geographical Indications Act 2014. Specifically, the Intellectual Property Office of Singapore had to determine whether the Requester's request for qualification under section 46(1)(b) read with section 46(2)(b) of the Act should be allowed.
Section 46(1)(b) of the Act allows any person to request that a qualification of the rights conferred in respect of a registered geographical indication be entered in the register in relation to any term which may be a possible translation of the geographical indication. Section 46(2)(b) provides that such a request may be made on the ground that the term referred to is not a translation of the geographical indication.
How Did the Court Analyse the Issues?
The Intellectual Property Office of Singapore first examined the legislative intent behind the Act's approach to the protection of translations of registered geographical indications. It noted that under the Act, translations of registered geographical indications are protected on a case-by-case basis, and applicants are not required to specify which translations they wish to protect at the point of registration.
The Office then considered the meaning of the term "translation" in the context of section 46(1)(b) of the Act. It observed that the Act does not define "translation", and there was no clear guidance in the legislative materials. The Office therefore had to interpret the term based on its ordinary meaning.
Analyzing dictionary definitions and expert evidence, the Office concluded that "Parmesan" is indeed a translation of "Parmigiano Reggiano". It found that the two terms are used interchangeably to refer to the same type of cheese, and that "Parmesan" is a commonly understood English translation of the Italian term "Parmigiano Reggiano".
The Office rejected the Requester's argument that "Parmesan" is not a translation because it has become a generic term for a certain type of cheese. It held that the Requester had not established that "Parmesan" has become the common name for the goods in Singapore, as required under the Act's exceptions.
What Was the Outcome?
The Intellectual Property Office of Singapore dismissed the Requester's request for qualification. It held that the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano", and therefore the protection of the geographical indication should extend to the use of the term "Parmesan".
As a result, the Registrant/Opponent's registered geographical indication for "Parmigiano Reggiano" will continue to be protected, including against the use of the term "Parmesan" in Singapore, unless one of the exceptions under the Act applies.
Why Does This Case Matter?
This case provides important guidance on the interpretation and application of the Geographical Indications Act 2014, particularly in relation to the protection of translations of registered geographical indications.
The decision clarifies that the Act adopts a case-by-case approach to the protection of translations, and that the term "translation" should be given its ordinary meaning. It establishes that "Parmesan" is a commonly understood English translation of the Italian term "Parmigiano Reggiano", and therefore falls within the scope of protection of the registered geographical indication.
The case is significant for producers, distributors, and users of products bearing geographical indications, as it sets a precedent on the extent to which translations of registered geographical indications will be protected in Singapore. It highlights the importance for third parties to closely monitor the registration of geographical indications and to actively participate in the qualification process if they wish to challenge the protection of particular translations.
Legislation Referenced
- Evidence Act
- Evidence Act 1893
- Interpretation Act
- Public Consultation on Changes to be made to the Geographical Indications Act
- The new Geographical Indications Act 2014
- The relevant sections of the Act
- Trade Marks Act
Cases Cited
- [2017] SGHC 230
- [2019] SGCA 50
- [2020] SGCA 43
- [2021] SGHC 198
- [2022] SGIPOS 7
- [2022] SGIPOS 11
- [2022] SGIPOS 7
Source Documents
This article analyses [2022] SGIPOS 11 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.