Case Details
- Citation: Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2023] SGHC 77
- Court: High Court of the Republic of Singapore
- Date: 2023-03-31
- Judges: Dedar Singh Gill J
- Plaintiff/Applicant: Fonterra Brands (Singapore) Pte Ltd
- Defendant/Respondent: Consorzio del Formaggio Parmigiano Reggiano
- Legal Areas: Intellectual Property – Geographical Indications
- Statutes Referenced: Evidence Act, Evidence Act 1893, The Geographical Indications Act 2014
- Cases Cited: [2023] SGHC 77, Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2022] 5 SLR 575
- Judgment Length: 42 pages, 10,865 words
Summary
This case centers on the question of whether the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano" under the Geographical Indications Act 2014 (GIA) of Singapore. The plaintiff, Fonterra Brands (Singapore) Pte Ltd, filed a request to qualify the rights conferred on the geographical indication "Parmigiano Reggiano" owned by the defendant, Consorzio del Formaggio Parmigiano Reggiano, arguing that "Parmesan" is not a translation of the registered term. The Principal Assistant Registrar (PAR) rejected the plaintiff's request, finding that "Parmesan" is a translation of "Parmigiano Reggiano" and should be accorded protection under the GIA. The plaintiff has appealed the PAR's decision to the High Court.
What Were the Facts of This Case?
The plaintiff, Fonterra Brands (Singapore) Pte Ltd, is a wholly-owned subsidiary of Fonterra Co-operative Group Limited, a New Zealand-based multinational dairy company. Fonterra Brands sells cheese products in Singapore, including a "traditional style parmesan" cheese marketed under the "Perfect Italiano" trade mark.
The defendant, Consorzio del Formaggio Parmigiano Reggiano, is a voluntary consortium of Parmigiano Reggiano cheese producers in Italy. It is tasked with protecting, promoting, and enhancing the Parmigiano Reggiano geographical indication. Parmigiano Reggiano cheese has been produced in the Parma and Reggio Emilia regions of Italy since the 1200s and has been recognized as a Protected Designation of Origin in the European Union since 1996.
In 2019, the defendant filed an application to register "Parmigiano Reggiano" as a geographical indication in Singapore, which was successful. The plaintiff then filed a request to qualify the rights conferred on this geographical indication, arguing that the term "Parmesan" should not be considered a translation of "Parmigiano Reggiano" and therefore should not be protected under the GIA. The defendant opposed the plaintiff's request, and the matter was heard by the PAR.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether the plaintiff's pleaded case prevented it from appealing the PAR's decision.
2. Who bears the burden of proof where a proposed qualification of rights is opposed.
3. Whether the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano" under the GIA.
How Did the Court Analyse the Issues?
On the first issue, the court found that the plaintiff's pleaded case did not prevent it from appealing the PAR's decision. The court held that the appeal was by way of rehearing, and there was no requirement to show a "material error of principle" before the court could intervene.
On the second issue, the court agreed with the PAR's finding that the burden of proof to establish whether a term is a translation of a geographical indication falls on the party opposing the qualification of rights, in this case, the defendant.
On the third issue, the court examined the meaning of "translation" in the context of the GIA. The court agreed with the PAR's interpretation that "translation" refers to the question of whether words have the same meaning in a different language. The court also accepted the PAR's findings that a faithful translation should be preferred over a literal translation, and that the translation should be considered for the geographical indication as a whole, not just individual words.
The court then considered the evidence presented by the parties. The court accepted the defendant's evidence from various dictionaries that defined "Parmigiano Reggiano" as another name for "Parmesan" cheese. The court rejected the plaintiff's argument that the translation should be based on how the term has been used in the marketplace, finding that such evidence was more relevant to the issue of whether "Parmesan" had become a generic term, which was not pleaded by the plaintiff.
Based on the evidence, the court concluded that the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano" and should be accorded protection under the GIA.
What Was the Outcome?
The High Court dismissed the plaintiff's appeal and upheld the PAR's decision that the term "Parmesan" is a translation of the registered geographical indication "Parmigiano Reggiano" and should be protected under the GIA. This means that the plaintiff cannot use the term "Parmesan" on its cheese products without infringing on the defendant's rights.
Why Does This Case Matter?
This case is significant as it provides the first judicial interpretation of the "qualification of rights" process under the GIA. The court's analysis of the meaning of "translation" in the context of geographical indications will be an important precedent for future cases involving the scope of protection for registered geographical indications.
The case also highlights the importance of geographical indications as a form of intellectual property protection. The court's decision reinforces the strong legal protection afforded to registered geographical indications, even against attempts to use similar-sounding terms. This decision will be of interest to producers, distributors, and regulators of products covered by geographical indications in Singapore and the region.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2023] SGHC 77 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.