Case Details
- Citation: [2023] SGHC 77
- Title: Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano
- Court: High Court of the Republic of Singapore (General Division)
- Tribunal Appeal No: Tribunal Appeal No 8 of 2022
- Date of Judgment: 31 March 2023
- Date of Hearing: 6 February 2023
- Judge: Dedar Singh Gill J
- Appellant: Fonterra Brands (Singapore) Pte Ltd
- Respondent: Consorzio del Formaggio Parmigiano Reggiano
- Legal Area: Intellectual Property – Geographical Indications
- Key Issue: Whether “Parmesan” is a translation of the registered geographical indication “Parmigiano Reggiano”
- Procedural Route: Appeal by way of rehearing from the Principal Assistant Registrar’s decision
- Decision Under Appeal: Principal Assistant Registrar Sandy Widjaja (“PAR”) allowed the Respondent’s opposition and rejected the Appellant’s request to qualify the scope of protection
- Statutes Referenced: Geographical Indications Act 2014 (Act 19 of 2014) (“GIA”); Evidence Act; Evidence Act 1893; Supreme Court of Judicature (Intellectual Property) Rules 2022 (“SCJ(IP)R”); Geographical Indications Rules 2019 (“GIR”)
- Cases Cited: 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 concerns the scope of protection afforded to a registered geographical indication (“GI”) in Singapore, specifically whether an allegedly unauthorised use in translation falls within the GI’s protected ambit. The registered GI at the centre of the dispute was “Parmigiano Reggiano”, owned by the Italian consortium Consorzio del Formaggio Parmigiano Reggiano. The Appellant, Fonterra Brands (Singapore) Pte Ltd, sought to qualify the rights conferred by that GI so that the term “Parmesan” would not be treated as a translation of “Parmigiano Reggiano”.
The Principal Assistant Registrar (“PAR”) rejected the qualification request. On appeal, the High Court (Dedar Singh Gill J) treated the matter as an appeal by way of rehearing, with constraints on the evidence that could be introduced. The central question remained whether “Parmesan” is a translation of “Parmigiano Reggiano” within the meaning of the Geographical Indications Act 2014. The court upheld the PAR’s decision, affirming that the statutory protection extends to unauthorised uses of a GI in translation, and that the evidence adduced supported the conclusion that “Parmesan” is indeed a translation of “Parmigiano Reggiano”.
What Were the Facts of This Case?
The Appellant, Fonterra Brands (Singapore) Pte Ltd, is a wholly owned subsidiary of Fonterra Co-operative Group Limited, a New Zealand-based multinational co-operative owned by dairy farmers. Fonterra’s business involves the collection, manufacture and sale of milk and milk-derived products, which it exports to more than 140 countries. In Singapore, Fonterra sells cheese under its “Perfect Italiano” trade mark. The cheese is produced in Australia and marketed as “traditional style parmesan”, with packaging that adopts the colours of the Italian national flag.
The Respondent, Consorzio del Formaggio Parmigiano Reggiano, is a voluntary consortium of Parmigiano Reggiano cheese producers established in Italy in 1934 as a non-profit organisation. It is tasked by the Italian Ministry of Agricultural, Food Sovereignty and Forestry with protection, promotion, enhancement, consumer information and general care of the interests relating to Parmigiano Reggiano cheese.
Historically, the term “Parmigiano Reggiano” refers to a cheese associated with the regions of Parma and Reggio Emilia. The judgment records that the cheese was first produced in the 1200s in monasteries located in those regions, and that over centuries it became associated with the term “Parmigiano Reggiano”. “Parmigiano” and “Reggiano” are understood as meaning “of Parma” and “of Reggio Emilia” respectively, even though production also occurred in surrounding provinces. The Respondent was created to manage competition from cheaper imitation products as production expanded in the 1900s.
At the European level, “Parmigiano Reggiano” has been recognised as a Protected Designation of Origin in the European Union since 1996. The judgment notes that this designation is grounded in EU Regulation (EU) No 1151/2012, identifying the cheese as originating from specified regions in Italy and bearing particular qualities or characteristics.
What Were the Key Legal Issues?
The High Court identified three principal issues. First, it considered whether the Appellant’s pleaded case prevented it from appealing the PAR’s decision. This issue reflects the procedural discipline required in qualification-of-rights proceedings: parties must plead their case clearly, and an appellant cannot generally shift its theory of the case on appeal.
Second, the court addressed the burden of proof where a proposed qualification of rights is opposed. In other words, when a GI owner opposes a request to narrow the scope of protection, which party bears the evidential and legal burden to establish the relevant statutory facts—here, whether the term in question is or is not a translation of the registered GI.
Third, and most importantly, the court considered whether “Parmesan” is a translation of “Parmigiano Reggiano”. This required the court to interpret the meaning of “translation” under the Geographical Indications Act and to decide what evidence is relevant to that inquiry, including whether market usage or consumer perception could be determinative.
How Did the Court Analyse the Issues?
Rehearing and the approach to intervention. The appeal was by way of rehearing. Under rr 28(4)–(5) of the SCJ(IP)R, the evidence used on appeal must be the same as that used before the PAR, with no further evidence unless the court permits otherwise. The High Court therefore heard the matter afresh, but without the flexibility of introducing new evidence as a matter of course. While the court noted that there was no requirement to show a “material error of principle” before intervention, it still considered the PAR’s decision as the parties had substantially built their submissions around her findings.
Pleading and the scope of the appeal. On the first issue, the court examined whether the Appellant’s pleaded case constrained its ability to challenge the PAR’s decision. The PAR had confined the analysis to the statutory ground relied upon by the Appellant: the Appellant’s request was confined to s 46(1)(b) read with s 46(2)(b) of the GIA, namely that “Parmesan” is not a translation of “Parmigiano Reggiano”. The Appellant was not, on the pleaded case, arguing that “Parmesan” had become generic. As a result, the High Court’s analysis focused on translation rather than genericness or other alternative theories.
Burden of proof. The second issue concerned who had to prove whether the term is a translation. The PAR had found that the burden lay on the party opposing the qualification request. This aligns with the structure of the qualification process: a request to qualify rights narrows the scope of protection that would otherwise attach to a registered GI. Accordingly, where the GI owner opposes the request, it is the opponent who must establish the statutory basis for refusing the qualification—here, that the term falls within the protected scope because it is a translation.
Meaning of “translation” under the GIA. The third issue required statutory interpretation. The PAR’s approach, which the High Court considered, treated “translation” as the question of whether words have the same meaning in a different language. The PAR also made several clarificatory comments: a faithful translation capturing the essence of the relevant word or phrase should be preferred over a purely literal translation; the translation inquiry concerns the geographical indication “as a whole”; there is no requirement that the term be the only translation; and the statute does not limit translation to English translations. The central inquiry was whether “Parmigiano Reggiano” could be converted from Italian into “Parmesan” (in English or otherwise).
Relevant evidence and the role of market perception. The PAR accepted dictionary evidence from the Collins Dictionary, Oxford Dictionary and Larousse Italian-French Dictionary. These sources supported the proposition that “Parmigiano Reggiano” is another name for “Parmesan” (or that “parmigiano” refers to “parmesan cheese”). The PAR rejected the Appellant’s argument that translation should depend on how the term is used in the marketplace, such as consumer perception. The PAR reasoned that consumer perception would be more relevant to genericness, which was not pleaded. Evidence about consumer perception could only be relevant to translation to the extent it was captured within the dictionary entries (for example, reflecting established meanings rather than market branding).
Application to the facts. Applying the translation framework to the evidence, the High Court agreed with the PAR’s approach. The court treated the dictionary entries as probative of the ordinary meaning relationship between the Italian GI term and the English term used in commerce. The court’s reasoning emphasised that the statutory protection for registered GIs extends to unauthorised uses in translation. If “Parmesan” is a translation of “Parmigiano Reggiano”, then the Appellant’s use would fall within the protected scope unless a valid qualification is granted. Since the Appellant’s qualification request depended on establishing that “Parmesan” is not a translation, and the evidence supported the contrary conclusion, the qualification could not be granted.
Procedural discipline and evidential limits. The High Court’s analysis also reflects the procedural discipline of qualification-of-rights proceedings. The Appellant’s case was confined to translation; it could not, on appeal, broaden into genericness or other grounds. Further, the rehearing nature of the appeal meant the court was constrained to the same evidential record. This reinforced the centrality of the dictionary-based evidence and the limited role of consumer perception where genericness is not pleaded.
What Was the Outcome?
The High Court dismissed the appeal and upheld the PAR’s decision. Practically, this meant that the Appellant’s request to qualify the rights conferred by the registered GI “Parmigiano Reggiano” was rejected. As a result, the statutory protection continued to extend to unauthorised uses of the GI in translation, including the term “Parmesan”.
The decision therefore confirms that, in Singapore, a party seeking to narrow the scope of GI protection must establish—on the relevant pleaded ground—that the contested term is not a translation of the registered GI. Where the evidence supports that the contested term is a translation, the qualification will fail.
Why Does This Case Matter?
This case is significant for practitioners because it provides a clear judicial approach to the “translation” inquiry under Singapore’s Geographical Indications Act 2014. The court’s endorsement of a meaning-based test—whether words have the same meaning in different languages—offers guidance on how to frame evidence and arguments in qualification-of-rights proceedings.
Second, the case illustrates the importance of pleading discipline. The Appellant’s inability to rely on genericness (because it was not pleaded) demonstrates that parties must select and plead the correct statutory ground at the outset. Attempting to recharacterise the case on appeal is unlikely to succeed, particularly in a rehearing context where the evidential record is fixed.
Third, the decision clarifies the evidential hierarchy for translation disputes. Dictionary evidence may be central, while market perception evidence may have limited relevance unless it is tied to the translation inquiry in a way that fits the pleaded statutory ground. For brand owners and GI applicants, this affects how they prepare opposition and qualification submissions, including whether to focus on linguistic meaning, established usage in authoritative references, and the statutory definition of translation.
Legislation Referenced
- Geographical Indications Act 2014 (Act 19 of 2014) (“GIA”), including s 46(1)(b) and s 46(2)(b)
- Supreme Court of Judicature (Intellectual Property) Rules 2022 (“SCJ(IP)R”), including rr 28(4)–(5)
- Geographical Indications Rules 2019 (“GIR”), including r 40(4)
- Evidence Act
- Evidence Act 1893
Cases Cited
- Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2022] 5 SLR 575
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.