Knowledge Highlights 26 November 2024
Singapore Court of Appeal rules that “Parmesan” is not a translation of geographical indication “Parmigiano Reggiano”
The recent Singapore Court of Appeal decision of Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Pamigiano Reggiano [2024] SGCA 53 (“Fonterra”) marks the final word in Singapore on a long-running dispute concerning the registered geographical indication “Parmigiano Reggiano”. The Court of Appeal ruled that the term “Parmesan” is not a translation of the geographical indication “Parmigiano Reggiano” and therefore the rights conferred on “Parmigiano Reggiano” under the Geographical Indications Act 2014 (“Act”) should not extend to the term “Parmesan”.
Background
The appellant had applied to the Registrar of Geographical Indications (“Registrar”) to qualify the rights (“Qualification Application”) conferred on “Parmigiano Reggiano” under the Act, such that the rights do not extend to the use of the term “Parmesan”. The Qualification Application was premised on the basis that the term “Parmesan” was not a translation of “Parmigiano Reggiano”. The Registrar adopted a “faithful translation” approach and decided that “Parmesan” was a translation of “Parmigiano Reggiano” and accordingly refused the Qualification Application.
On appeal to the General Division of the High Court, the Judge upheld the Registrar’s decision and decided that “Parmesan” was a translation of “Parmigiano Reggiano”. In doing so, the Judge also agreed with the Registrar that a “faithful translation” approach should be adopted. Further, the Judge held that consumer perception is generally irrelevant to the question of whether a term is a translation of a geographical indication under the Act, save to the extent that it has been reflected in the entries of reputable dictionaries. For more on the High Court decision, please read our article “Singapore High Court rules that “Parmesan” is a translation of geographical indication “Parmigiano Reggiano”.
Court of Appeal’s decision
In overturning the Judge’s decision, the Court of Appeal was of the view that a translation under the Act must be a translation known to the average consumer in Singapore, as the function of a geographical indication is to indicate that a product originates from a specified region for the purposes of consumer protection.
Notably, the Court of Appeal found that while dictionaries remain a helpful starting point for ascertaining the ordinary meaning of words, dictionaries may not accurately reflect the usage of certain words among the local population of Singapore, as the dictionary-prescribed meanings of words may not necessarily be the meaning which the Singapore populace would ascribe to those words. On the facts, while the Court of Appeal broadly agreed with the Judge that the dictionary extracts put into evidence by the respondent provided some support for the contention that there was an equivalence in meaning between “Parmigiano Reggiano” and “Parmesan cheese”, the Court of Appeal also noted that the same dictionary extracts were meanings compiled by foreign publishers and were not designed to reflect the vernacular used by locals in Singapore, and as such, could not be definitively relied upon.
Instead, the Court of Appeal held that the evidence submitted by the appellant of marketing practices adopted in Singapore, especially the considerably different marketing practices adopted for “Parmigiano Reggiano” cheese and “Parmesan” cheese, was sufficient for the inference that Singapore consumers do not regard “Parmesan” cheese as cheese which must originate exclusively from the specified regions in Italy from which “Parmigiano Reggiano” originates.
In particular, the Court of Appeal was persuaded that the marketing material directed at consumers in Singapore clearly establishes that more products have been sold and labelled as “Parmesan” without any association with “Parmigiano Reggiano”. Further, the Court of Appeal held that the way various “Parmesan” cheese products have been marketed and sold to consumers in Singapore would have influenced the average Singapore consumer to consider that, unlike “Parmigiano Reggiano” cheese which must originate from the specified region in Italy, “Parmesan” is not “Parmigiano Reggiano” and can and does, in fact, originate from locations outside Italy. Both these factors led the Court of Appeal to hold that “Parmesan” was not a translation of “Parmigiano Reggiano”.
Impact of the decision
As can be seen from its reasoning, the Court of Appeal in Fonterra confirms that the perception of the average consumer in Singapore is the foremost consideration when evaluating purported translations of geographical indications under Singapore law. This principle extends even to the choice of dictionaries as evidence of translations. Further, the decision indicates a willingness of the Court of Appeal to consider marketplace practices as credible evidence of how consumers would perceive geographical indications, bearing in mind that protection of the Singapore consumer is the primary purpose of geographical indications.
The Singapore consumer’s perception of any geographical indication is a recurring theme as seen in the Court of Appeal’s earlier decision in Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37 (“Prosecco”). In Prosecco, the Court of Appeal was tasked with determining whether the term “Prosecco” was a name of a grape variety which would mislead the consumer as to the true origin of the product, such that it would be a bar to the registration of “Prosecco” as a geographical indication. The Court of Appeal held that it was impossible to infer the knowledge that Singapore consumers would have solely from the evidence of advertising materials, without evidence that demonstrated the extent of user engagement with such advertising material. For more on the decision in Prosecco, please read our article “Singapore Court of Appeal allows registration of “Prosecco” as geographical indication”.
Notwithstanding the differing outcomes, the courts in both decisions are in agreement that consumer surveys may be an effective means of proving the perception of the average Singapore consumer. However, both decisions caution that as consumer surveys can be skewed to reach a desired result, parties should also adduce evidence of how such consumer surveys were conducted if they intend to rely on the same.
Reference materials
The Court of Appeal judgment in Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Pamigiano Reggiano [2024] SGCA 53 is available on the Singapore Courts website www.judiciary.gov.sg.
