This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 3: Emerging Issues in Geographical Indications
High Court of Singapore (General Division) [2023]: Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2023] SGHC 77
Date of judgment: March 31, 2023
Issuing authority: High Court of Singapore (General Division)
Level of the issuing authority: First judicial instance [on appeal from an administrative decision]
Type of procedure: Judicial (Civin( �/span>
Subject matter: Geographical Indications
Appellant: Fonterra Brands (Singapore) Pte Ltd
Respondent: Consorzio del Formaggio Parmigiano Reggiano
Keywords: Geographical indications, Translation of a geographical indication, Scope of protection
Basic facts: The appeal turns on the question of whether “Parmesan” is a translation of “Parmigiano Reggiano.”
The Geographical Indications Act 2014 (GIA) accords protection to all registered geographical indications, including the geographical indication “Parmigiano Reggiano” owned by Consorzio del Formaggio Parmigiano Reggiano (“the Respondent”) for cheese. This protection extends to any unauthorized use of a geographical indication in translation. Third parties may, however, submit a request to qualify the scope of such protection from extending to specific terms on the basis that such terms are not translations of the geographical indication in question. Fonterra Brands (Singapore) Pte Ltd (“the Appellant”) submitted such a request with respect to the Respondent’s geographical indication, asserting that the term “Parmesan” is not a translation of “Parmigiano Reggiano.” The Respondent opposed the request.
The Principal Assistant Registrar (PAR) found in favor of the Respondent – i.e., that “Parmesan” is a translation of “Parmigiano Reggiano” and should therefore be accorded protection under the GIA. The Appellant appeals against the PAR’s decision.
Held: The High Court held that the Respondent had met its burden of proving that “Parmesan” is a translation of “Parmigiano Reggiano” and dismissed the appeal accordingly.
Relevant holdings in relation to emerging issues in geographical indications: Regarding whether a faithful or a strict literal approach to translation should be taken in the context of the GIA, the High Court found no reason to disagree with the PAR that a faithful translation should be preferred in the determination of whether a purported translation is the result of a conversion of the geographical indication from one language to another. A faithful translation captures the essence of the word or phrase in question. Because geographical indications serve to establish a link between the quality of a product and its geographical origin, a faithful translation ensures that the meanings within these geographical indications—which allow them to fulfill their function—are retained within the purported translations.
Regarding the evidence relevant to the translation inquiry, the High Court held that consumer perception is generally irrelevant to the question of whether a term is a translation of a geographical indication under the GIA, save to the extent where such perception is reflected in extracts taken from reputable dictionaries. Because section 46(2)(b) of the GIA focuses on the protection of translations of geographical indications, as long as a term is found to be a faithful translation of a registered geographical indication, it generally does not matter what consumers within the marketplace perceive the words to refer to, provided the term does not amount to the generic or common name for the good or service in question.
Finally, on the question of whether sufficient evidence had been adduced to prove that “Parmesan” is a translation of “Parmigiano Reggiano,” the High Court found that the Respondent had fulfilled its burden in proving that “Parmesan” is a translation of the geographical indication “Parmigiano Reggiano” for the purposes of section 46(2)(b) read with section 46(1)(b) of the GIA. The various reputable dictionaries demonstrate that the Italian term “Parmigiano Reggiano,” which has assimilated into common parlance in the countries around Italy, is understood to bear the same meaning as the word “Parmesan” in English and in French. The dictionaries also reveal that the terms “Parmesan,” “Parmigiano” and “Parmigiano Reggiano” are generally used interchangeably to refer to cheese hailing from the same regions in Italy.
Relevant legislation:
Geographical Indications Act 2014 (Act 19 of 2014)