In the recent Court of Appeal decision of Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2024] 2 SLR 624, the Court of Appeal found that the evidence supported the inference that consumers in Singapore regarded “Parmesan” and “Parmigiano Reggiano” as referring to two different kinds of cheese products distinguishable by origin and “Parmesan” was not a translation of “Parmigiano Reggiano”.
Background. Fonterra Brands (Singapore) Pte Ltd (“Fonterra”) was a company involved in the manufacture and sale of cheese. It filed a request under the Geographical Indications Act 2014 to qualify the rights conferred of the geographical indicator (“GI”) “Parmigiano Reggiano”. In other words, Fonterra’s request was that the protection of the GI “Parmigiano Reggiano” should not extend to the use of the term “Parmesan”. Consorzio del Formaggio Parmigiano Reggiano (“Consorzio”), who was the registrant of the registered GI “Parmigiano Reggiano”, opposed the request.
At first instance, the registrar rejected Fonterra’s request. On appeal to the High Court, the judge held that “Parmesan” was a translation of “Parmigiano Reggiano” and rejected the appeal. Fonterra then appealed to the Court of Appeal.
Protection afforded by the Geographical Indications Act 2014. The Court of Appeal started by noting that, within the rich tapestry of Singapore’s culinary culture, cheese holds a significant place not only as a delectable food item but also as an essential ingredient of many staple dishes. The protection of GIs safeguards the interests of Singaporean consumers by providing greater assurance that food products truly carry the characteristics attributable to their geographical origin which they are known for. However, the registration of a GI should not prevent fair and established competition from products of a similar nature which have their origins outside of the registered geographical area.
The burden of proof in an application to qualify rights is on the requestor. The Court of Appeal found that the registrar must be satisfied that the request discloses a prima facie case, following which the registrar is obliged to publish the proposed qualification of rights in the Geographical Indications Journal to allow for oppositions. The applicant must then satisfy the registrar on a balance of probabilities that either exceptions in the Geographical Indications Act applies or that the term is not a translation of the GI. Only then, will the registrar be obliged to enter the qualification of rights in the register.
“Parmesan” is not a translation of “Parmigiano Reggiano”. The Court of Appeal stated that the assessment of whether a translated term is known to the average consumer in Singapore must be supported by credible evidence. Here, it was concerned about the average consumer in Singapore, which means Singapore citizens and residents, not individuals who are merely passing through. The average consumer is not someone with a specialist knowledge of cheese, nor can it be said that the average consumer of Parmesan or Parmigiano Reggiano cheese must be a member of the expatriate community or just the Italian community in Singapore.
While dictionaries in the English language remain a helpful starting point for ascertaining the ordinary meanings of words, it must be borne in mind that words do not exist in a vacuum. Howa particular word is used and the meaning or meanings which it bears over time may vary depending on the context and local conditions in which the word is used. Therefore, dictionaries may not accurately reflect the usage of certain words among the local population in Singapore. Dictionary meanings should not be taken to be determinative, because the meaning of words evolves over time and, more importantly, the meaning given to words in English dictionaries is not necessarily the meaning which the Singapore populace would ascribe to the same words. For instance, the meaning of a word in a particular language or vernacular in Singapore, which should be taken into account, may not be captured in a the definition listed in a foreign-published dictionary of that language, because such dictionary entries have been curated by individuals from another country who may not be informed of the usage of the same word in Singapore.
The Court of Appeal was satisfied that sufficient evidence had been adduced by Fonterra 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.
Consequently, the Court of Appeal allowed the appeal and dismissed the opposition and permitted a qualification of rights to be entered into the register stating that the protection of the GI “Parmigiano Reggiano” should not be extended to the use of the term “Parmesan”.
The Court of Appeal also ordered Consorzio to pay Fonterra legal costs of $100,000.
Significance. Apart from clarifying points in relation to the Geographical Indications Act 2014, this case is significant for its comments made on translations and how words are to be interpreted within a particular context. This reasoning could be extended to the interpretation of contracts and written agreements.
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