Fonterra Brands v Consorzio: Parmesan as Translation of Parmigiano Reggiano
In Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano, the Singapore High Court addressed whether "Parmesan" is a translation of the geographical indication "Parmigiano Reggiano." The court dismissed the appeal, holding that "Parmesan" is indeed a translation and thus protected under the Geographical Indications Act. The court considered dictionary definitions and rejected arguments that consumer perception should dictate the translation.
1. Case Overview
1.1 Court
General Division of the High Court of the Republic of Singapore1.2 Outcome
Appeal Dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Singapore High Court rules 'Parmesan' is a translation of 'Parmigiano Reggiano', protecting the geographical indication under the GIA.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Fonterra Brands (Singapore) Pte Ltd | Appellant | Corporation | Appeal Dismissed | Lost | |
| Consorzio del Formaggio Parmigiano Reggiano | Respondent | Association | Appeal Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Dedar Singh Gill | Judge of the High Court | Yes |
4. Counsels
4. Facts
- Fonterra sought to qualify the rights of Consorzio's 'Parmigiano Reggiano' geographical indication.
- Fonterra argued 'Parmesan' is not a translation of 'Parmigiano Reggiano'.
- The Principal Assistant Registrar found in favor of Consorzio, that 'Parmesan' is a translation.
- Fonterra appealed the Registrar's decision.
- The court considered dictionary definitions of 'Parmesan' and 'Parmigiano Reggiano'.
- The court found that 'Parmigiano Reggiano' has entered into the English vernacular.
- The court found that the terms 'Parmesan', 'Parmigiano' and 'Parmigiano Reggiano' are generally used interchangeably.
5. Formal Citations
- Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano, Tribunal Appeal No 8 of 2022, [2023] SGHC 77
6. Timeline
| Date | Event |
|---|---|
| Geographical Indications Act 2014 enacted | |
| Consorzio filed application to register 'Parmigiano Reggiano' as geographical indication with IPOS | |
| Registration of 'Parmigiano Reggiano' as a geographical indication | |
| Fonterra filed request to qualify rights conferred on 'Parmigiano Reggiano' | |
| Registrar proposed to allow the request and published the qualification of rights | |
| Consorzio filed an opposition to the request | |
| Opposition heard by the Principal Assistant Registrar | |
| Judgment reserved | |
| Judgment issued |
7. Legal Issues
- Translation of Geographical Indications
- Outcome: The court held that 'Parmesan' is a translation of 'Parmigiano Reggiano' for the purposes of the Geographical Indications Act.
- Category: Substantive
- Sub-Issues:
- Faithful vs. Literal Translation
- Relevance of Consumer Perception
- Burden of Proof in Qualification of Rights
- Outcome: The court held that the burden of proof lies on the party opposing the qualification of rights.
- Category: Procedural
- Admissibility of Evidence
- Outcome: The court held that expert evidence is not a necessary condition in the present case for the court to make a finding on whether “Parmesan” is a translation of “Parmigiano Reggiano”.
- Category: Procedural
- Sub-Issues:
- Expert Evidence
- Dictionary Extracts
8. Remedies Sought
- Qualification of Rights
9. Cause of Actions
- Qualification of Rights under Geographical Indications Act
10. Practice Areas
- Intellectual Property Litigation
11. Industries
- Food and Beverage
- Dairy
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel | High Court | Yes | [2022] 5 SLR 575 | Singapore | Cited for the principle that there is no requirement that a material error of principle must be shown before intervention is warranted on appeal. |
| Bumi Geo Engineering Pte Ltd v Civil Tech Pte Ltd | High Court | Yes | [2015] 5 SLR 1322 | Singapore | Cited for the proposition that parties must stand by their pleaded cases in litigation proceedings. |
| Yitai (Shanghai) Plastic Co, Ltd v Charlotte Pipe and Foundry Co | High Court | Yes | [2022] 3 SLR 656 | Singapore | Cited for the fundamental purpose of pleadings is to define the issues and inform the opponent in advance regarding the case which he has to meet. |
| CLUB EUROPE Trade Mark | Not Available | Yes | [2000] RPC 329 | Not Available | Cited to support the approach adopted in contested trade mark registration applications where notices of opposition and counter-statements effectively constitute pleadings. |
| Commission of the European Communities v Germany | European Court of Justice | No | [2008] ETMR 32 | European Union | Cited for the observation that it is unlikely that many cases will turn on the translation ground. |
| re Criminal Proceedings against Bigi (Consorzio del Formaggio Parmigiano Reggiano, intervening) | Court of Justice of the European Communities | Yes | [2002] 3 CMLR 3 | European Union | Cited for the opinion of Advocate General Philippe Léger that a faithful translation expresses the historic, cultural, legal and economic reality that attaches to the registered name and to the product covered by that registration. |
| Illumina, Inc & Anor v TDL Genetics Ltd & Ors | English High Court | No | [2019] EWHC 1497 (Pat) | England and Wales | Cited as an example of a case where expert evidence was called to translate a word within a specific larger context. |
| Sobrinho v Impresa Publishing | English High Court | No | [2015] EWHC 3542 (QB) | England and Wales | Cited as an example of a case where the English High Court was tasked with translating a word located in the headline of an article. |
| Kellogg Co v Pacific Food Products Sdn Bhd | Court of Appeal | Yes | [1998] 3 SLR(R) 904 | Singapore | Cited for the principle that the courts may refer to dictionaries to ascertain both the meaning of a word. |
| Coca-Cola Company of Canada Limited v Pepsi-Cola Company of Canada Limited | Privy Council | Yes | [1942] 1 All ER 615 | Canada | Cited for the principle that the courts may refer to dictionaries to ascertain the use to which the thing denoted by the word is commonly put. |
| Dukhovskoi’s Applications | Not Available | Yes | [1985] RPC 8 | Not Available | Cited as an example that dictionary extracts can be accorded significant weight. |
| Scotch Whisky Association v Isetan Mitsukoshi Ltd | High Court | Yes | [2020] 3 SLR 725 | Singapore | Cited for the doctrine of evocation is neither statutorily provided for in the GIA nor recognised under Singapore law. |
13. Applicable Rules
| Rule Name |
|---|
| Supreme Court of Judicature (Intellectual Property) Rules 2022 |
| Geographical Indications Rules 2019 |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Geographical Indications Act 2014 | Singapore |
| Evidence Act 1893 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Parmesan
- Parmigiano Reggiano
- Geographical Indication
- Translation
- Qualification of Rights
- Consumer Perception
- Dictionary Definition
- Burden of Proof
15.2 Keywords
- Parmesan
- Parmigiano Reggiano
- Geographical Indication
- Singapore
- Intellectual Property
- Translation
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Intellectual Property Law | 90 |
| Geographical indications | 85 |
| Qualification of rights | 70 |
| Translation | 60 |
| Trademarks | 50 |
16. Subjects
- Intellectual Property
- Geographical Indications
- Food Law