The Singapore Law Gazette

Making Headways with Geographical Indications Protection in Singapore

In Singapore, recent prominent cases under the Geographical Indications Act 2014 (GI), have drawn attention to the Singapore Courts’ stance on the protection of geographical indications (GIs) and how they ensure the need for consumer protection. The article compares the Singapore Court’s decision with the position in the EU to provide a comprehensive insight into the progress of GIs development in Singapore.

In Singapore, intellectual property (IP) protection for geographical indications (GIs) was first legislatively provided for by the enactment of the Geographical Indications Act (Cap. 117B) (Old GIA) in 1998. The Old GIA ratified Singapore’s obligations under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights.¹Singapore Parliamentary Debates, Official Report (26 November 1998) vol 69 at col 1704 (Assoc. Prof. Ho Peng Kee, Minister of State for Law) In 2014, as a result of the EU-Singapore Free Trade Agreement which included obligations to establish a system for the registration and protection of GIs,²Article 10.17 of the EU-Singapore Free Trade Agreement the Old GIA was replaced by the Geographical Indications Act 2014 (GIA), which came into force in 2019.

Despite this, it was only recently that the Singapore Courts finally had the chance to consider the scope of protection given to GIs under the GIA in the following two decisions:

1. Whether the term “Parmesan” is a translation of the GI “Parmigiano Reggiano” in Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2023] SGHC 77 (Fonterra v Parmigiano Consorzio); and

2. Whether the GI “Prosecco” to be registered is the name of a plant variety and is likely to mislead the consumer as to the true origin of the product in Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37 (Prosecco Consorzio v AGWI).

These decisions are the first reported cases under the GIA, and turn on the interpretation of specific provisions in the GIA relating to the translation of a GI and the registrability of GIs that contain the name of a plant variety or an animal breed. While the courts offered useful guidance on the interpretation of those provisions in the GIA, the respective outcomes in these decisions appear to be constrained by the specific facts of each case. We will examine how these two cases reflect the stance taken by Singapore Courts to the protection of GIs, compare them with the position in the EU, where GI-related cases come before the courts much more often, and analyse what they mean for the GI regime in Singapore moving forward.

Fonterra v Parmigiano Consorzio

This decision involved the registered GI “Parmigiano Reggiano” which identifies a type of hard cheese originating from specified regions in Italy which bears particular qualities or characteristics. Fonterra Brands (Singapore) Pte Ltd (Fonterra) filed a request (“Request) under section 46(1)(b) read with 46(2)(b) of the GIA to qualify the rights conferred on the GI on the basis that the word “Parmesan” is not a translation of the registered GI “Parmigiano Reggiano” and therefore that the rights granted do not extend to the use of the term “Parmesan”.

When the Request was heard by the Principal Assistant Registrar (PAR) at the Intellectual Property Office of Singapore, the PAR found in favour of the respondent, Consorzio del Formaggio Parmigiano Reggiano (Parmigiano Consorzio), namely that “Parmesan” is a translation of “Parmigiano Reggiano” and should therefore be accorded protection under the GIA. On appeal, the General Division of the High Court upheld the PAR’s decision. In coming to its decision, the Court affirmed the principles that a faithful translation which captures the meaning of the words in question ought to be preferred in determining whether a term is a translation of a GI, and that consumer perception is generally irrelevant to the question of whether a term is a translation of a GI unless such perception has been reflected in the entries of reputable dictionaries.

Recognising that “Parmigiano Reggiano” is an Italian term that has made its way into the vocabulary of neighbouring countries by way of the extensive trading of the cheese referred to, the High Court proceeded to consider the definitions of “Parmigiano” and/or “Parmigiano Reggiano” in various reputable dictionaries which stated that the Italian term “Parmigiano Reggiano” is understood to bear the same meaning as the word “Parmesan” and that the terms “Parmesan”, “Parmigiano” and “Parmigiano Reggiano” are generally used interchangeably to refer to the same cheese. The Court concluded that Parmigiano Consorzio had fulfilled its burden in proving that “Parmesan” is a translation of the term “Parmigiano Reggiano”.

It is material to note that Fonterra did not submit, both on appeal and before the PAR, that the term “Parmesan” has become the generic or common name for “Parmigiano Reggiano”. Instead, as the High Court noted at various points in its judgment, Fonterra relied solely on the ground in section 46(2)(b) read with section 46(1)(b) of the GIA, namely that “Parmesan” is not a translation of “Parmigiano Reggiano”. The scope of the appeal was therefore confined to the translation inquiry. The Court observed that while irrelevant to the question of translation, consumer perception would be relevant to the question of whether a GI has become generic, though the Court did not consider the issue further as it was not part of Fonterra’s pleaded case.

The Position in the European Union (EU)

In the EU, “Parmigiano Reggiano” is protected as registered protected designation of origin (PDO). The scope of protection of the PDO “Parmigiano Reggiano” has been challenged in a number of cases, including in European Commission v. Federal Republic of Germany (C-132/05) [2008] ETMR 32 (CMC v Germany).

In CMC v Germany, an action was brought against Germany for failure to comply with its obligations to enforce the protection of the PDO “Parmigiano Reggiano” in its territory by refusing to prosecute the use of the word “Parmesan” in connection with cheese placed on the market and produced in violation of the mandatory specification for the PDO “Parmigiano Reggiano”. It was contended that such use of the name “Parmesan” constituted an infringement of Article 13(1)(b)³Article 13(1)(b) of Regulation No 2081/92 states that a PDO is protected against “any misuse, imitation or evocation, even if the true origin of the product is indicated, or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’ or ‘imitation’ or similar…” although such protection is limited by the subsequent qualifier that “(w)here a registered name contains within it the name of an agricultural product or foodstuff which is considered generic, the use of that generic name on the appropriate agricultural product or foodstuff shall not be considered to be contrary to (Article 13(1)(b))“. of Council Regulation No 2081/92⁴Note that Regulation 2081/92 has since been repealed. There are currently a number of EU regulations applicable to the protection of GIs and replaced by Council Regulation No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, including Regulation No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. on the basis that the term “Parmesan” is the correct translation of the PDO “Parmigiano Reggiano”, and in the alternative that such use of “Parmesan” constitutes an evocation of the PDO.

In determining that the protection of the PDO “Parmigiano Reggiano” extended to “Parmesan”, the European Court of Justice (ECJ) first concluded that the use of the name “Parmesan” must be regarded as an evocation of the PDO “Parmigiano Reggiano”. The ECJ reasoned that the phonetic and visual similarity as well as conceptual proximity between those two terms are such as to bring to the mind of the consumer the cheese protected by the PDO “Parmigiano Reggiano”, when he is confronted by a hard cheese bearing the name “Parmesan”.

As a result of this finding on evocation, the ECJ considered that it did not have to consider the question of whether the name “Parmesan” is a translation of “Parmigiano Reggiano”.

The ECJ went on to dismiss Germany’s contention that the name “Parmesan” has evolved to become a generic name pursuant to Article 3(1) which provided that “[n]ames that have become generic may not be registered“. The ECJ observed that when assessing the generic character of a name, it is necessary to take into account various factors, including the places of production of the product concerned, the consumption of that product and how it is perceived by consumers inside and outside that territory. As a result of a lack of evidence adduced in respect of these factors, the ECJ held that the use of the word “Parmesan” for cheese which did not comply with the specification for the PDO “Parmigiano Reggiano” must be regarded as infringing.

Remarks

While both the Singapore Court and the ECJ extended protection for the GI/PDO “Parmigiano Reggiano” to “Parmesan”, they did so based on very different reasons. The ECJ’s decision in CMC v Germany turned on the doctrine of evocation, which is neither statutorily provided for in the GIA nor recognised under Singapore law.⁵See Scotch Whisky Association v Isetan Mitsukoshi Ltd (2020) 3 SLR 725 at (39) and Fonterra v Parmigiano Consorzio at (76). Notably, neither the Singapore Court nor the ECJ substantively considered the question of whether the name “Parmesan” has become a generic name. While the issue came before the ECJ in CMC v Germany, the ECJ was not presented with sufficient evidence for it to make any meaningful assessment on it.

What the general public is unlikely to realise is that the decision in Fonterra v Parmigiano Consorzio was confined to a translation inquiry, and the question of whether the name

“Parmesan” has become generic in the sense that consumers in Singapore cease to regard it as an indication of the geographical origin of the product, and come to regard it only as an indication of a type of hard cheese, may still come before the Courts in future. If found to be generic, the use of the name “Parmesan” would not infringe the GI “Parmigiano Reggiano”. This shift in meaning has affected the names of other cheeses in the EU. For example, while “Camembert de Normandie” is a registered PDO in the EU, the generic term “Camembert” has come to describe any mild, soft, bloomy rind cheese regardless of where it’s produced.

The decision in Fonterra v Parmigiano Consorzio has had practical implications for consumers. Presumably as a result of the decision, all of Fonterra’s products in Singapore that were previously named “Parmesan” have since been renamed to “Traditional Hard Cheese”. As there are numerous types of hard cheeses with different characteristics and taste profiles, it is arguable that the decision has led to greater consumer uncertainty in the marketplace. This is ironic given that that consumer protection is a key policy consideration underlying the GIA. Instead of leaving the question of whether the term “Parmesan” has become generic open and to be determined by an appropriate case that may or may not be brought before the courts, consumer protection and certainty may have been better achieved by Parliament retaining a right to identify cheeses which it considers has become generic in Singapore in the GIA.

Prosecco Consorzio v AGWI

This case before the Court of Appeal (CA) involved an application by the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco for the registration of “Prosecco” as a GI in respect of wines in Singapore, which was opposed by the Australia Grape and Wine Incorporated (AGWI), the representative body for grape growers and winemakers in Australia.

The appeal turned on the interpretation of section 41(1)(f) of the GIA, which specifies that “a geographical indication which contains the name of a plant variety or an animal breed and is likely to mislead the consumer as to the true origin of the product” must not be registered. The AGWI contended that “Prosecco” is the name of a plant variety and is likely to mislead the consumer as to the true origin of the product.

In the decision below, the General Division of the High Court ruled that the GI application did objectively contain the name of a plant variety, namely the “Prosecco” grape. As a result of evidence that “Prosecco” wines were being produced in commercial quantities in countries such as Australia, the High Court concluded that the application was likely to mislead the consumer in Singapore, and allowed the AGWI’s opposition under section 41(1)(f).

On appeal, the CA reversed the decision of the High Court and held that “Prosecco” should be allowed to proceed to registration as a GI. In so doing, the CA clarified that the proper approach to section 41(1)(f) involves two conjunctive requirements, namely that the GI sought to be registered: (1) contains the name of a plant variety or an animal breed; and (2) was likely to mislead the consumer as to the true geographical origin of the goods.

The first requirement is objective and does not involve a high threshold to be crossed. All that would need to be shown is that the name in question is indeed recognised as the name of a plant variety or an animal breed by a not insignificant population of people. Evidence of this could come from reputable scientific journals, legal registers of plant varieties or even from the general usage of the term as denoting a plant variety or an animal breed among a body of consumers or producers. The AGWI crossed the threshold, with the Court viewing as material the fact that “Prosecco” had indeed been recognised in the EU as the name of a grape variety prior to 1 August 2009.

The second requirement involves assessing whether the GI sought to be registered is likely to mislead consumers into thinking that “Prosecco” wine could only originate from the regions specified in the application when, in fact, their true origin could be other geographical locations where the “Prosecco” grape variety is used to make wine. The Court identified three non-exhaustive factors that must be taken into account, namely:

1. Whether the average consumer in Singapore is even aware that the name in question is indeed the name of a plant variety or an animal breed;
2. Whether the Singapore consumer is aware that the plant variety or animal breed in question is involved in the production of the product over which GI protection is sought; and
3. Whether the GI sought to be registered is identical with the name of the plant variety or animal breed or whether it contains other words in addition to the name of the plant variety or animal breed.

The CA found that the AGWI failed to establish that the GI application for “Prosecco” is likely to mislead the Singapore consumer as to the true geographical origin of “Prosecco”. The AGWI’s evidence was limited to advertising materials as well as statistics showing the increase in the volume of Australian “Prosecco” imported into Singapore, which did not shed light on the material inquiry of whether Singapore consumers would likely have been misled. The Court highlighted that whether a GI is likely to mislead would depend very much on what the Singapore consumer is aware of. The Court found that the evidence adduced failed to show that Singapore consumers might be aware that “Prosecco” is also the name of a grape variety used to make wine of the same name. In fact, based on the advertising material adduced by the AGWI, what had often been marketed to the Singapore consumer was that “Prosecco” wine was actually produced with a variety of grape called “Glera”.

The Position in EU

The EU equivalent of section 41(1)(f) of the GIA (Article 6(2) of EU Regulation 1151) specifically excludes wine and spirits. As a body governing a region with many wine producing countries, GIs for wines are dealt with somewhat differently in the EU. Likely recognizing the fact that specific grape variety names have been historically used on wine labels, the EU has a listing of the countries who can use specific variety names on the labels of wine even though the variety name is the same or similar to a protected PDO or GI.⁶See Commission Delegated Regulation (EU) 2019/33 of 17 October 2018 supplementing Regulation (EU) No 1308/2013 of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, restrictions of use, amendments to product specifications, cancellation of protection, and labelling and presentation. As such, producers in Italy may use “Montepulciano” on a label of a wine containing Montepulciano grapes, even though the wine may not come from the Montepulciano wine region. Similarly, “Alicante” can be referred to as a grape varietal in Italy, even though Alicante in Spain is recognised as a PDO (it is notable that other countries who can use varietals with the word “Alicante” in them, cannot use the name “Alicante” on its own to designate wine). It is not clear if this list of exceptions was created because evidence had been adduced that consumers in the countries that feature on the list, recognize the grape name as a plant varietal.

An obvious question is whether there was a corresponding EU carve-out for “Prosecco” as a grape variety, and the answer is no. In 2009 the grape variety “Prosecco” was renamed “Glera” to prevent confusion between the PDO “Prosecco” and the grape variety.⁷See the Commission Regulation No 1166/2009 of 30 November 2009 amending and correcting Commission Regulation No 606/2009 laying down certain detailed rules for implementing Council Regulation No 479/2008 as regards the categories of grapevine products, oenological practices and the applicable restrictions ((2009) OJ L 314/27). Following this, any wine produced from the “Glera” grape outside of the protected region had to be labelled “Glera”.

Remarks

It was emphasised by the CA in Prosecco Consorzio v AGWI that there are marked differences between the Singapore model of GI protection and the EU model such that there is limited scope to apply EU principles to the interpretation of the GIA. What is more relevant and pertinent to the exercise of statutory interpretation is the legislative intention behind the GI protection framework in Singapore, with consumer protection being one of the key policy considerations underlying the GIA.

Be this as it may, it would be interesting to see the Court’s approach in an application where the GI sought to be registered is recognised under EU law as the name of a grape variety. While the decision would likely turn on whether Singapore consumers recognize the name as a grape variety, rather than whether such name is recognised in the EU as the name of grape varietal per se, it may very well be that use as the name of a grape variety in the EU would have a bearing on whether consumers in Singapore recognise it as such.

It is also conceivable that as a result of the guidance given by the CA on the test to be applied in section 41(1)(f) of the GIA, importers or producers of a product made from a plant variety or animal breed that shares the same name as a GI recognised in another country, may take steps in their advertising or product literature to educate Singapore consumers that the name refers to the said plant variety or animal breed. Whether this is a positive development from a consumer protection standpoint will remain to be seen as it may well be that such advertising has the effect of confusing consumers as to the true origin of a product.

Concluding Words

The law governing GIs is still slowly developing and at its infancy in Singapore. Given that the two reported decisions so far relate only to the interpretation of two provisions in the GIA, it will be interesting to see how the law develops in other of GI protection given that the GIA already differs materially from equivalent laws in Europe. As the Singapore food market grows in maturity and sophistication, consumers will take a greater interest in where their food and drinks come from. We are therefore likely to see more GIA-related cases in the future.