APAA e-Newsletter (Issue No. 36, August 2023)

Parmesan – a Protectible Translation of Parmigiano Reggiano? Reflections on the Qualification of Rights Regime for GIs in Singapore

Marcus Liu, Amica Law LLC (Singapore)

Fonterra Brands (Singapore) Pte. Ltd. V Consorzio Del Formaggio Parmigiano Reggiano [2023] SGHC 77 – this case is the latest development in a dispute concerning the Geographical Indication “Parmesan Reggiano” (the “GI”) in Singapore.

The Fonterra Co-operative Group Limited (the “Requester”) filed a request for qualification of the GI claiming that the protection of the GI should not extend to the use of the term “Parmesan” (the “Request”). The Request was made pursuant to section 46(1)(b) read with section 46(2)(b) of the Geographical Indications Act 2014 (“GIA”) on the basis that “Parmesan” is not a translation of the GI and therefore should not benefit from the legal protection given to the GI.

Consorzio Del Formaggio Parmigiano Reggiano (the “Registrant/Opponent”) filed an Opposition to the Request and succeeded in the first instance proceeding before the Intellectual Property of Singapore (“IPOS”), when the Registrar allowed the Opposition to the Request and held, inter alia, that “Parmesan” was indeed a translation of the GI.

Following this, an appeal was filed to the Singapore High Court, which has now upheld the earlier IPOS decision. The appeal judgment considers several interesting issues in the consideration of requests for qualification, which are explored below.

Parmesan traders beware?

The High Court has now affirmed that “Parmesan” is a translation of the GI. This means that the GI covers the use of the word “Parmesan” and implies that “Parmesan” should only be used in connection with cheese that is produced in the regions associated with the GI. Ostensibly, traders in Singapore who use “Parmesan” for cheese from other regions would infringe the GI.

However, there may be a possible defence under the GIA – the GIA allows the use of a name contained in a registered geographical indication if it is identical to the term customarily used in common language to describe such goods or services in Singapore. Does Parmesan qualify as a customary term used to describe a generic hard dry cheese variety in Singapore? This point was left open and remains to be determined in the future.

For now:

1. there is no change in position for traders who use “Parmesan” to describe products from the relevant regions, and which bear the characteristics associated with the GI; and

2. the position of traders who are using “Parmesan” to describe products that are not from the relevant regions and/or do not bear the characteristics associated with the GI has not been determined.

It remains to be seen whether there will be future enforcement actions, or if a further request for limitation of scope of the GI could be filed on the basis that ‘Parmesan’ is a common or generic term.

Requests for Qualification – A low threshold?

The decision also explored a more nuanced issue relating to the standard of proof required in the Request.

On appeal, the Registrant/Opponent to the Request argued that the Registrar could not have been satisfied that the grounds for requesting a qualification of rights were made out, citing inter alia, the fact that the statement of grounds was only 2 pages long.

However, the High Court found that the Registrar had satisfied themselves in this case, although the specific findings of the High Court were not particularized. In particular, the High Court held:

“I therefore do not find the Statement of Grounds to be so devoid of justification that the Registrar could not have concluded, whether correctly or incorrectly, that “Parmesan” was a possible translation of “Parmigiano Reggiano”.

It appears that as long as the Statement of Grounds discloses any justification that purports to establish a ground for a Request for Qualification of Rights, the Registrar is entitled “whether correctly or incorrectly” to accept and publish said Request for Qualification.

While the particular facts on which the Registrar relied in allowing the Request were also not particularized, this does raise an interesting query as to the appropriate threshold for accepting and publishing Requests for Qualification of Rights.

Faithful Translations – Dictionary defined

The High Court also accepted the Registrar’s assertion that a faithful translation should be preferred over a literal translation as the former expresses the “historic, cultural, legal and economic reality that attaches to the registered name and to the product covered by the registration”.

However, there is some conceptual friction between the principle of adopting “faithful translations”, and the assertion that consumer perception and contextual evidence (in determining whether or not a term was a translation) is irrelevant.

The High Court attempted to address this by focusing on dictionary evidence as relevant evidence for the purposes of considering what is indicative of faithful translations. The High Court proposed that only consumer perceptions which were captured in reputable dictionaries could be accepted as relevant evidence in establishing whether a translation is a faithful translation.

There is a clear practical advantage in using dictionary evidence to achieve a balance between giving due weight to consumer perception and contextual evidence versus the potential uncertainty in the same. However, there is still a risk that this does not adequately account for practical realities and other potentially probative evidence outside of dictionary publications. It would be interesting to see if there is room for other forms of evidence to be considered in the translation inquiry in future cases.


Notwithstanding certain ambiguities, this case is a welcome addition to the still nascent field of Geographical Indications law in Singapore. Considering the rapidly developing jurisprudence, Singapore is fast becoming an important jurisdiction to watch in the development of Geographical Indications law.