Introduction
 
In the recent case of Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2023] SGHC 77, the Singaporean High Court held, on an appeal against the decision of the Intellectual Property Office of Singapore (“IPOS”), that “Parmesan” is a translation of “Parmigiano Reggiano”, an Italian term used for a type of hard, grainy cheese made from cows’ milk that has originated from the provinces of Parma and Reggio Emilia in Italy since the 13^th century.
  
Brief facts
 
The Appellant is a wholly owned subsidiary of Fonterra Co-Operative Group Limited, a multinational co-operative company based in New Zealand (“the Appellant”) that is involved in the collection, manufacture and sale of milk and milk-derived products exported globally, including cheese sold under the “Perfect Italiano” trademark and marketed as “traditional style parmesan”. The Respondent is a voluntary consortium of Parmigiano Reggiano cheese producers established as a non-profit organisation in Italy since 1934 (“the Consortium” or “the Respondent”), and is tasked by the Italian Ministry of Agricultural, Food Sovereignty and Forestry with the protection, promotion, enhancement, consumer information and general care of the interests relating to “Parmigiano Reggiano” cheese.
 
The Respondent filed an application with the IPOS to register “Parmigiano Reggiano” as a geographical indication under the Singaporean Geographical Indications Act 2014 (“the Singaporean GIA”) in respect of cheese originating from specified regions in Italy that bears particular qualities and characteristics on 23 April 2019 which was successfully registered by the IPOS on 22 June 2019. The registration extends protection to the geographical indication in translation. Shortly thereafter, the Appellant filed a request to IPOS to qualify the rights conferred on this geographical indication under section 46(1)(b) read with section 46(2)(b) of the Singaporean GIA on the basis that “Parmesan” is not a translation of the registered geographical indication “Parmigiano Reggiano” (“the Request”). The Registrar of Geographical Indications proposed to allow the Request and published the Appellant’s qualifications of rights in the journal for opposition purposes. This resulted in the Respondent filing an opposition to the Request (“the Opposition”).
 
Decision by the Principal Assistant Registrar of the IPOS
 
On 15 March 2022, the Principal Assistant Registrar (“PAR”) found that “Parmesan” is a translation of “Parmigiano Reggiano” and allowed the Opposition by the Respondent. In reaching this decision, the PAR commented that in terms of accuracy, a faithful translation, which captures the essence of a word or phrase should be preferred over the literal translation of the word or phrase. Additionally, the PAR stated that what is required is a translation of the geographical indication as a whole, and there was no requirement that it be the only translation, nor is there a limitation in section 46 of the Singaporean GIA for the translation to be an English translation. The PAR considered and accepted the Respondent’s evidence of relevant dictionary entries which put forward the case that “Parmigiano Reggiano” is translated to “Parmesan”. The Appellant’s attempt to adduce evidence of consumer perception in relation to a translation was however rejected. The Appellant then appealed against this decision to the Singaporean High Court.

Decision by the High Court
  
In the High Court, the Appellant mainly contended that a faithful translation should be eschewed in favour of a strict literal approach. The Appellant further contended that the PAR erred in relying on the dictionary extracts alone as the Respondent should have also adduced a translation of “Parmigiano Reggiano” from a qualified translator as the dictionary extracts do not show that the Italian words may be converted to “Parmesan” in English or French. The Appellant also argued that consumer perception should be considered to determine whether a term is a translation or not. In reply, the Respondent reiterated that a faithful translation is preferred over a literal translation, that certified translations are unnecessary as translators also refer to dictionary definitions in their translations and that marketplace evidence should be excluded in matters of translations.
 
The High Court, in considering whether “Parmesan” is a translation of “Parmigiano Reggiano” took the position that the learned PAR was correct and that it is sensible for a faithful translation to be adopted for the purposes of the Singaporean GIA. This is because it ensures the meaning of the geographical indication is retained within the translation and allows the geographical indication to fulfil its function to establish a link between the quality of a product and its geographical origin. The High Court opined that a literal translation may result in inaccuracies which may allow the protection to be extended in an unprincipled manner or unjustifiably restrict the protection.
 
The High Court was satisfied from the evidence adduced, particularly the dictionary extracts produced by the Respondent, that the Respondent had fulfilled its burden to prove that “Parmesan” is a translation of the term “Parmigiano Reggiano” based on a faithful translation of the words. The appeal was thus dismissed, and the PAR’s decision affirmed.
 
Commentary
 
The decision above is premised on a particular provision of the Singaporean GIA, namely section 46(2)(b) read with section 46(1)(b), that provides a specific avenue for third parties to request for a qualification to be entered on the register of geographical indications in relation to any term which may be a possible translation of the geographical indication, on the ground that the term is not a translation of the geographical indication. There is however no corresponding provision to this in the recently introduced Malaysian Geographical Indications Act 2022¹ (“the Malaysian GIA”).
 
It is interesting to note that in Malaysia, “Parmigiano Reggiano” is a registered geographical indication under the Malaysian GIA, in the name of Consorzio del Formaggio "Parmigiano-Reggiano", the same Respondent in the above case. As a result of this registration in Malaysia, the Consortium has the right to use or authorise others to use the registered geographical indication in relation to goods for which the geographical indication is registered.² In addition, the Consortium is entitled to take action or seek relief against those who unlawfully use “Parmigiano Reggiano” in Malaysia pursuant to sections 34, 35 and 77 of the Malaysian GIA. Sections 34 and 35, inter alia, set out offences of falsely applying a registered geographical indication to goods.
 
On the other hand, section 77 allows any interested person of goods identified by a geographical indication (such as a producer or trader of the goods, or an association of such producers or traders or of such producers and traders) to institute court proceedings against a person for carrying out specified acts in relation to the geographical indication, including using a geographical indication in the course of trade in a manner which misleads the public about the geographical origin of the goods.
 
It is possible that the Consortium may take action against a person who uses “Parmesan” on cheese products in Malaysia that do not originate from the Parmigiano Reggiano region and bear the qualities and characteristics associated with products from that region, on the ground that such use is misleading the public as to the geographical origin of the goods. In such event, the Malaysian Court may decide whether or not to adopt the above decision of the Singaporean High Court which held that “Parmesan” is a translation of “Parmigiano Reggiano”. It should be noted that Section 77(5) of the Malaysian GIA suggests that the protection under a registered geographical indication may extend to a translation of a geographical indication which is applied to goods which are in the same category, but which did not originate from the place indicated by the registered geographical indication.
 
Sections 79 to 84 of the Malaysian GIA provide various exceptions relating to the use of a geographical indication which may be raised in defence of a claim brought under section 77. These include: 

Singapore is not the only jurisdiction to grapple with the use of “Parmesan” and “Parmigiano Reggiano”. In Australia, the Australian trademark office decision in Consorzio Del Formaggio Parmigiano Reggiano v Kraft Foods Group Brands LLC [2022] ATMO 166 took the stand that the use of the word “Parmesan” in Australia in relation to a type of cheese or flavour, does not always refer to cheeses made in Parmigiano Reggiano in accordance with the defined procedures set out in the Consortium’s existing certification trademarks.
 
The Australian case centred around the application by Kraft Foods Group Brands LLC to register “KRAFT PARMESAN CHEESE” as a trademark. The arguments raised by the Consortium in opposing the application on grounds that “Parmesan” is widely used in Australia interchangeably with “Parmigiano Reggiano” to refer to a certain type of cheese produced in a particular region in Italy and thus, if registered, the Kraft mark would likely deceive and cause confusion to consumers when used in connection with cheese that is not produced in that particular geographical region and in accordance with a defined procedure, and that it would also be likely to deceive or create confusion for consumers in respect of the nature and origin of the goods were unsuccessful. The Consortium’s appeal to the Federal Court of Australia against the decision of the Australian trademark office in allowing the mark to proceed to registration is pending.
 
Conclusion

The Singaporean High Court has determined that “Parmesan” is a translation of the Italian term “Parmigiana Reggiano” and that use of “Parmesan” would be akin to the use of a registered geographical indication and thus be prohibited. It remains to be seen whether Malaysia would see a similar challenge and what the outcome of such a challenge would be, considering the decision was centred around a specific provision on the translation of the term and Malaysia does not have a similar provision to the Singaporean GIA.
 
It is possible that the Consortium may be more vigilant in protecting its registration in other jurisdictions, especially after its success in Singapore. This may result in the Consortium filing more claims against those who use “Parmesan” in order to protect their geographical indication, “Parmigiano Reggiano” as such use may mislead the public that the goods originated from the particular regions in Italy that bear certain qualities and characteristics. These potential claims could be supported by the Singaporean High Court’s ruling that “Parmesan” is a translation of “Parmigiano Reggiano” and that protection should be extended to translations of a registered geographical indication.
 
Case commentary by Teh Hong Koon (Partner) and Laura Anastasia Kurian (Associate) of the Intellectual Property Practice of Skrine.
 

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