26 April 2023

Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2023] SGHC 77

In the recent decision of Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano (“Fonterra”), the General Division of the Singapore High Court ruled that the term “Parmesan” is a translation of the geographical indication “Parmigiano Reggiano”. This article highlights the implications of this decision. 

Geographical indications are signs used in trade to identify goods as originating from a place. In Singapore, the recognition, registration and protection of geographical indications is governed by the Geographical Indications Act 2014 (“Act”), which sets out the protections for geographical indications generally on top of the additional protections afforded to geographical indications that are registered in Singapore’s Registry of Geographical Indications.

The decision in Fonterra 

The decision in Fonterra concerns the registered geographical indication “Parmigiano Reggiano” which identifies a type of hard cheese originating from certain specified provinces in Italy. The appellant had applied to qualify the rights (“Qualification Application”) conferred on “Parmigiano Reggiano”, such that the rights do not extend to the use of the term “Parmesan”. The Qualification Application was on the basis that the term “Parmesan” was not a translation of “Parmigiano Reggiano”. In dismissing the appeal, the General Division of the High Court held that “Parmesan” was in fact a translation of “Parmigiano Reggiano” for the purposes of the Qualification Application.

Implications

The decision in Fonterra arguably provides a basis for a party claiming rights to the “Parmigiano Reggiano” geographical indication to argue that the term “Parmesan” is a translation of “Parmigiano Reggiano” in other proceedings against persons who use the term “Parmesan” in relation to cheese.

Under the Act, an interested party of the goods (defined in the Act as a producer or trader of the goods, or an association of producers and traders of the goods) identified by a registered geographical indication may commence legal action against a person alleged to be a user of a registered geographical indication (or a translation of the same) in relation to goods of the same class which did not originate in the place indicated by the registered geographical indication.

If it is established that “use” of the registered geographical indication misleads the public as to the geographical origin of the goods, the court may grant an injunction against the user to restrain the further “use” of the registered geographical indication, order damages or an account of profits, as well as make orders of delivery up or disposal of the infringing goods, materials and articles.

However, it should also be noted that a party who is alleged to be a user of the term “Parmesan” may also be able to avail itself to some defences under the Act that will exempt the party from liability.

One such defence is if the user had continuously used the term “Parmesan” in Singapore in relation to goods or services for at least 10 years preceding 1 January 2004, or if the user had continuously used the term “Parmesan” in Singapore in relation to goods or services in good faith preceding 1 January 2004. In either of the above cases, an action cannot be commenced against that user for the “use” of the term “Parmesan” in relation to those same goods or services.

Another defence is if the alleged “use” of the term “Parmesan” is in relation to goods or services where the term “Parmesan” is identical with the common name of those same goods or services in Singapore.

What is “use” and who is the user under the Act

Ultimately, the implications of the decision in Fonterra are relevant to whoever is alleged to be a user of the “Parmigiano Reggiano” geographical indication and/or its translation, “Parmesan”. The scope of the definition of “use” and by extension, user, of a geographical indication which would render a party vulnerable to legal action under the Act has yet to be determined by the Singapore courts.

To begin with, “use” of a geographical indication has been defined in the Act as follows:

“use” means use as part of, or in connection with — 

(a) any transaction, including a purchase, a sale or an exchange; 

(b) any importing or exporting; 

(c) any advertisement; or 

(d) any invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

The above definition suggests that “use” in the Act appears to only reference commercial activities and that the typical activity of an end-consumer will not constitute “use” of a geographical indication.

It must be noted that the Singapore courts have previously considered the meaning of “use” in the context of the Trade Marks Act 1998 (“Trade Marks Act”). The Trade Marks Act sets out the following examples as “uses” of a sign, such examples bearing similarities to the definition of “use” under the Act:

…a person uses a sign if, in particular, the person — 

(a) applies it to goods or the packaging thereof; 

(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; 

(c) imports or exports goods under the sign; 

(d) uses the sign on an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or 

(e) uses the sign in advertising.

Infringing “use” of a sign in the Trade Marks Act must always be in the course of trade and in Burberry Ltd v Megastar Shipping Pte Ltd and another appeal [2019] 1 SLR 536, the Singapore Court of Appeal held that the use of a sign in the course of trade under the Trade Marks Act refers generally to use for commercial purposes.

However, the phrase “in the course of trade” is notably absent from the sections relating to infringing “use” in the Act, which therefore suggests that infringing “use” of geographical indications under the Act can include non-commercial purposes. Therefore, whether “use” and by extension, user, in the Act, is limited only to commercial activities remains a question that has yet to be confirmed by the Singapore courts.

In addition, and as expressly illustrated in the above extract from the Trade Marks Act, the examples of activities that constitute “use” of a sign under the Trade Marks Act require use of the sign or use “under the sign”. On the other hand, “use” of geographical indications in the Act is defined as “use as part of, or in connection with” the acts set out in the Act, therefore suggesting that the scope of acts amounting to “use” of a geographical indication may be wider than that under the Trade Marks Act. As such, the precise scope of the acts that may run afoul of the protections afforded to geographical indications will require further elucidation from the Singapore courts.

The judgment is available on the Singapore Courts website www.judiciary.gov.sg by clicking here.

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