Case Details
- Citation: [2024] SGCA 53
- Court: Court of Appeal of the Republic of Singapore
- Date: 2024-11-22
- Judges: Tay Yong Kwang JCA, Belinda Ang Saw Ean JCA and Judith Prakash SJ
- Plaintiff/Applicant: Fonterra Brands (Singapore) Pte Ltd
- Defendant/Respondent: Consorzio del Formaggio Parmigiano Reggiano
- Legal Areas: Intellectual Property — Geographical indications
- Statutes Referenced: Geographical Indications Act, Geographical Indications Act 2014, Trade Marks Act
- Cases Cited: [2022] SGIPOS 11, [2023] SGHC 77, [2024] SGCA 53
- Judgment Length: 48 pages, 12,367 words
Summary
This case concerns a request by Fonterra Brands (Singapore) Pte Ltd to qualify the rights conferred on the registered geographical indication (GI) "Parmigiano Reggiano" held by the Consorzio del Formaggio Parmigiano Reggiano. Fonterra sought to exclude the term "Parmesan" from the protection of the "Parmigiano Reggiano" GI, arguing that "Parmesan" is not a translation of the Italian term. The Court of Appeal ultimately dismissed Fonterra's appeal, finding that the Consorzio had established that "Parmesan" is a translation of "Parmigiano Reggiano" and therefore falls within the scope of the registered GI's protection.
What Were the Facts of This Case?
The appellant, Fonterra Brands (Singapore) Pte Ltd, is a wholly owned subsidiary of a New Zealand-based dairy cooperative. Fonterra sells cheese products in Singapore, including under the "Perfect Italiano" trade mark. The respondent, Consorzio del Formaggio Parmigiano Reggiano (the Consorzio), is an Italian consortium responsible for protecting and promoting the Parmigiano Reggiano cheese. The Consorzio holds the registered GI for "Parmigiano Reggiano" in Singapore, which covers cheese originating from a specified region in Italy.
In 2019, after the "Parmigiano Reggiano" GI was registered, Fonterra filed a request to qualify the rights conferred by the GI. Fonterra sought to exclude the term "Parmesan" from the GI's protection, arguing that "Parmesan" is not a translation of "Parmigiano Reggiano". Fonterra asserted that Parmigiano Reggiano cheese must originate from the specified region in Italy, whereas Parmesan cheese can be made anywhere and differs in terms of milk content, regulations, taste, color, and texture.
The Registrar of Geographical Indications initially proposed to allow Fonterra's request, but the Consorzio filed an opposition. The Principal Assistant Registrar (PAR) ultimately rejected Fonterra's request, finding that the legal burden was on the Consorzio to establish that "Parmesan" is a translation of "Parmigiano Reggiano", and the Consorzio had met this burden. Fonterra appealed the PAR's decision to the Court of Appeal.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Who bears the burden of proof in establishing whether a term is a translation of a registered geographical indication under the Geographical Indications Act 2014 (GIA)?
2. Whether the term "Parmesan" is a translation of the registered GI "Parmigiano Reggiano" within the meaning of the GIA.
How Did the Court Analyse the Issues?
On the issue of burden of proof, the Court of Appeal agreed with the PAR that the burden lies on the party opposing the qualification of rights, which in this case was the Consorzio. The court noted that under the GIA, the determination of whether a term is a translation of a registered GI is made on a case-by-case basis, either during infringement proceedings or when a qualification of rights is requested under section 46.
Turning to the substantive issue, the court examined the meaning of "translation" in the context of the GIA. The court observed that section 4(6) of the GIA extends the special non-confusion-based protection for GIs identifying wines and spirits to registered GIs identifying other agricultural products, including the protection of translations. The court held that what is required is a translation of the GI as a whole, not just a literal translation of individual words.
The court reviewed the evidence submitted by the Consorzio, which included expert linguistic evidence and historical sources tracing the use of the term "Parmesan" as a translation of "Parmigiano Reggiano" in various languages. The court found that the Consorzio had established that "Parmesan" is a translation of "Parmigiano Reggiano" and therefore falls within the scope of protection of the registered GI.
What Was the Outcome?
The Court of Appeal dismissed Fonterra's appeal and upheld the PAR's decision to reject Fonterra's request to qualify the rights conferred on the "Parmigiano Reggiano" GI. The court held that the Consorzio had successfully established that "Parmesan" is a translation of the registered GI, and therefore the protection of the "Parmigiano Reggiano" GI extends to the use of the term "Parmesan".
Why Does This Case Matter?
This case is significant for several reasons:
1. It provides clarity on the burden of proof in establishing whether a term is a translation of a registered GI under the GIA. The court confirmed that the burden lies on the party opposing the qualification of rights, rather than the GI registrant.
2. The court's interpretation of the term "translation" in the context of the GIA is important, as it establishes that the protection extends to translations of the GI as a whole, not just literal translations of individual words.
3. The case highlights the importance of the GI regime in Singapore, which aims to protect the interests of consumers by ensuring the accurate labeling of food products based on their geographical origin. The court's decision reinforces the strong protection afforded to registered GIs, including against the use of translations.
4. The case has practical implications for businesses seeking to use terms that may be considered translations of registered GIs. Manufacturers and distributors must be cautious in their use of such terms to avoid infringing on the rights conferred by the GI.
Legislation Referenced
Cases Cited
Source Documents
This article analyses [2024] SGCA 53 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.