Fonterra Brands (Singapore) Pte. Ltd. v Consorzio del Formaggio Parmigiano Reggiano
3 cases cited
Catchwords
Practice Areas
Counsel (10)
Bird & Bird ATMD LLP Firm Faculty of Law, Singapore Management University Firm Mirandah Law LLP Firm Ravindran Associates LLP Firm Chan Wenqiang Counsel Appellant Gordon Ionwy David Llewelyn Counsel Independent Counsel Loy Ming Chuen Brendan Counsel Respondent Sivagnanaratnam Sivananthan Counsel Respondent Sukumar s/o Karuppiah Counsel Appellant Yip Shuen Kai Harren Counsel Appellant
Case Significance
Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2024] SGCA 53 was decided by the Court of Appeal on 22 November 2024, comprising Tay Yong Kwang JCA, Belinda Ang Saw Ean JCA and Judith Prakash SJ, with Judith Prakash SJ delivering the judgment of the court (judgment reserved after hearings on 5 April and 29 July 2024). Civil Appeal No 37 of 2023 arose from Tribunal Appeal No 8 of 2022, under s 32(2)(e) of the Geographical Indications Act 2014 (Act 19 of 2014) and Rule 26 of the Supreme Court of Judicature (Intellectual Property) Rules 2022, concerning a Request for a Qualification to Singapore Geographical Indication Application No. 50201900057U by Fonterra Brands (Singapore) Pte Ltd and the opposition by Consorzio del Formaggio Parmigiano Reggiano.
The appeal concerned Intellectual Property law on geographical indications, specifically the qualification of rights, the burden of proof, and whether "Parmesan" is a translation of "Parmigiano Reggiano". Judith Prakash SJ noted that within Singapore's culinary culture cheese holds a significant place both as a food item and as an ingredient of staple dishes, and that under the Geographical Indications Act 2014 the protection of geographical indications safeguards relevant interests. The appellant was represented by Mirandah Law LLP and Ravindran Associates LLP, the respondent by Bird & Bird ATMD LLP, with independent counsel from the Faculty of Law, Singapore Management University including Gordon Ionwy David Llewelyn.
Summary
SUPREME COURT OF SINGAPORE
22 November 2024
Case summary
Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2024] SGCA 53
Civil Appeal No. 37 of 2023
Civil Appeal No. 37 of 2023
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Decision of the Court of Appeal (delivered by Senior Judge Judith Prakash):
Outcome: CoA allowed the appeal and granted the request for a qualification of rights to be entered into the register of GIs that the “protection of the geographical indication “PARMIGIANO REGGIANO” should not extend to the use of the term “Parmesan””.
Pertinent and significant points of the GD
• Under the Geographical Indications Act 2014 (Act 19 of 2014) (the “GIA”), protection is afforded to translations of a registered geographical indication (“GI”) identifying agricultural products (other than wines and spirits). The Court of Appeal held that the term a “translation” under the GIA must refer to a translation known to the average consumer in Singapore. Therefore, how a term said to be a translation is known and used locally can have an impact on the inquiry.
• The Court of Appeal held that the assessment of whether a translated term is known to the average consumer in Singapore is based on credible evidence and such evidence is not restricted to dictionary evidence.
• The Court of Appeal was satisfied that the marketing practices adduced by the appellant supported an inference that consumers in Singapore regard “Parmesan” and “Parmigiano Reggiano” as referring to two different kinds of cheese products distinguishable by origin.
1 This was an appeal against the High Court Judge’s decision in HC/TA 8/2022 which held that “Parmesan” was a translation of the geographical indication “Parmigiano Reggiano” for the purposes of qualification of rights proceedings under the Geographical Indications Act 2014 (Act 19 of 2014) (the “GIA”) and dismissed the appellant’s appeal against the Principal Assistant Registrar’s decision at first instance. The appeal related to the GIA in force as of 16 September 2019 (ie, on the date that the appellant filed its request for a qualification of rights). Although the GIA was subsequently amended on 15 August 2020 by the Geographical Indications (Amendment) Act 2020 (No 5 of 2020), nothing turns on the subsequent amendment.
Background to the appeal and the material facts
2 The appellant was a wholly owned subsidiary of a New Zealand-based co-operative company owned by 10,000 dairy farmers in New Zealand and its activities included the manufacture and sale of cheese sold by the appellant under the “Perfect Italiano” trade mark in Singapore.
3 The respondent was a voluntary consortium of Parmigiano Reggiano cheese producers in Italy and was the holder of “Parmigiano Reggiano” as a protected designation of origin under European Union law. In Singapore, the Consorzio is the registrant of the registered geographical indication (“GI”) No. 50201900057U for “Parmigiano Reggiano” for cheese originating from the specified region of “the part of the province of Bologna to the left of the River Reno, the part of the province of Mantua to the right of the River Po, and the provinces of Modena, Parma and Reggio Emilia” in Italy” (the “Specified Region”). This GI was formally registered on 22 June 2019.
4 On 16 September 2019, after the GI was successfully registered, the appellant filed a request to qualify the rights conferred in respect of the GI “Parmigiano Reggiano” under s 46(1)(b) read with s 46(2)(b) of the Geographical Indications Act 2014 (Act 19 of 2014) (the “GIA”) on the basis that the term “Parmesan” is not a translation of “Parmigiano Reggiano” (the “Request”). The appellant asserted that unlike “Parmigiano Reggiano” cheese which must originate from the Specified Region, “Parmesan” cheese can be made anywhere in the world and need not originate from Italy.
5 The Registrar of Geographical Indications (the “Registrar”) proposed to allow the Request and published the proposed qualification of rights in the Geographical Indications Journal for opposition purposes on 12 November 2019.
6 On 12 March 2020, the respondent filed an opposition to the Request (the “Opposition”).
7 At first instance, the Principal Assistant Registrar (the “PAR”) allowed the Opposition and rejected the Request. Among other matters, the PAR held that “Parmesan” was a translation of “Parmigiano Reggiano” and found that various dictionary entries reflected the same. On appeal, the High Court Judge likewise held that “Parmesan” was a translation of the GI “Parmigiano Reggiano” and dismissed Fonterra’s appeal against the PAR’s decision.
8 The following issues arose for the CA’s determination:
a. Which party bears the burden of proof where a proposed qualification of rights is opposed?
b. What is the proper approach to the meaning of a “translation” under s 41(1)(b) read with s 46(2)(b) of the GIA, and is consumer perception relevant?
c. Applying this approach, is “Parmesan” a translation of “Parmigiano Reggiano”?
Decision on appeal
9 The qualification of rights process under the GIA provides an avenue for interested persons to request that there should be a qualification to the rights conferred under the GIA in relation to certain elements of the GI for which registration was sought. Providing such avenue allows both the registrant of the GI and interested third party traders to achieve clarity on whether specific terms will or will not be available for use by third parties: at [24] and [25].
10 On the burden of proof, regardless of whether a proposed qualification of rights is opposed or unopposed, there are two thresholds that a party who makes a request (the “Requestor”) must cross before the requested qualification of rights under s 46 of the GIA can be allowed (at [32] and [45]):
a. first, the Registrar must be satisfied that the request discloses a prima facie case, and if he is so satisfied only then is the Registrar obliged to publish the proposed qualification of rights in the Geographical Indications Journal for opposition purposes; and
b. second, after the proposed qualification of rights has been published for opposition purposes, the Requestor must satisfy the Registrar on a balance of probabilities that it has made out either or both of the grounds in s 46(2) of the GIA, and only then will the Registrar be obliged to enter the qualification of rights in the register.
11 On the meaning of a “translation” under the GIA, this refers to a translation known to the average consumer in Singapore. Therefore, how the term is known and used locally can have an impact on the inquiry. For example, it is difficult to see how a term in a language that is hardly heard or used in Singapore (eg, Tibetan or Xhosa) can be said to convey any particular meaning to the average consumer, such as to be a translation protected under the GIA: at [49] and [57].
12 The average consumer of Parmesan or Parmigiano Reggiano cheese is not someone with a specialist knowledge of cheese, nor is he or she necessarily a member of the expatriate community or just the Italian community in Singapore: at [52].
13 The assessment of whether a translated term is known to the average consumer in Singapore must be supported by credible evidence, which may come from a variety of sources and need not be restricted to the meaning of words as reflected in the entries of reputable dictionaries: at [53].
14 Dictionaries in the English language remain a helpful starting point for ascertaining the ordinary meanings of words. However, dictionary meanings should not be taken to be determinative of the usage of a word in Singapore, especially where there is cogent evidence to the contrary: at [54] and [64].
15 The evidence of marketing practices adduced by the appellant was sufficient to support an inference that consumers in Singapore regard “Parmesan” and “Parmigiano Reggiano” as referring to two different kinds of cheese products distinguishable by origin, in that Parmigiano Reggiano originates from a specific region in Italy whereas Parmesan can come from several countries or regions. Marketing practices can, to some extent and depending on the context at play, influence consumer awareness of a product on the market: at [65]–[67] and [76].
Conclusion
16 The Court of Appeal was satisfied that “Parmesan” is not a translation of “Parmigiano Reggiano” for the purposes of s 46(1)(b) read with s 46(2)(b) of the GIA. The Court of Appeal granted the appeal, with the result that the Request succeeded, the Opposition was dismissed, and the qualification of rights should be entered into the register that the “protection of the geographical indication “PARMIGIANO REGGIANO” should not extend to the use of the term “Parmesan”: at [82] and [83].
This summary is provided to assist in the understanding of the Court’s grounds of decision. It is not intended to be a substitute for the reasons of the Court. All numbers in bold font and square brackets refer to the corresponding paragraph numbers in the Court’s grounds of decision.
What was the central question in Fonterra Brands v Consorzio del Formaggio Parmigiano Reggiano [2024] SGCA 53?
Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2024] SGCA 53 concerned geographical indications under the Geographical Indications Act 2014, including the qualification of rights, the burden of proof, and whether "Parmesan" is a translation of "Parmigiano Reggiano".
Who decided the Parmesan geographical indication appeal [2024] SGCA 53?
[2024] SGCA 53 was decided by the Court of Appeal comprising Tay Yong Kwang JCA, Belinda Ang Saw Ean JCA and Judith Prakash SJ, with Judith Prakash SJ delivering the judgment on 22 November 2024 in Civil Appeal No 37 of 2023.
Statutes Cited
Sale of Food Act (Cap 283)
s 56(1)
Cases Cited (3)
SG (1)
[2023] SGHC 77
SLR (2)
[2018] 5 SLR 312 [2023] 2 SLR 509
Referenced in
Statutes interpreted in this judgment
Judgment
Read the full judgment on the official Singapore Courts portal.
Read on eLitigationSource: eLitigation ([2024] SGCA 53)