Fonterra (the appellant) filed a request with the Intellectual Property Office of Singapore (IPOS) to qualify the scope of protection of the geographical indication (GI) “Parmigiano Reggiano,” arguing that the word “Parmesan” was not a translation of “Parmigiano Reggiano.”
Consorzio del Formaggio Parmigiano Reggiano (the respondent), owner of the GI “Parmigiano Reggiano,” successfully challenged the request before the Registrar, based on dictionary entries that stated that “Parmesan” was indeed a translation of “Parmigiano Reggiano,” and thus was accorded protection under the Geographical Indications Act 2014.
The appellant appealed to the High Court, which dismissed the appeal in a decision published March 31, 2023, and affirmed the decision of the IPOS tribunal.
The court held that, for clarity’s sake, an owner of a GI applying for protection for a translation of that GI must set out that translation in its evidence. If either party does not provide any supporting evidence, the burden of proof is on the party challenging the qualification of the GI—in this case, the respondent—to establish its grounds of opposition.
The respondent accordingly submitted multiple dictionary entries which state that the terms “Parmesan,” “Parmigiano,” and “Parmigiano Reggiano” were all used interchangeably to refer to the same subject cheese. The subject cheese was first made in monasteries in Parma and Reggio Emilia, to which the terms “Parmigiano” and “Reggiano” refer.
Though the subject cheese was also produced in other surrounding areas, the term “Parmigiano Reggiano” was identified as a protected designation of origin in the European Union in 1996, which requires that the subject cheese be derived from specific areas in Italy and possess distinctive characteristics.
With respect to the evidence required, the court held that the dictionary translations sufficed, and that expert evidence was not mandatory for all questions relating to translation. The translation provided should be a faithful one rather than a strictly literal one, i.e., one that expresses the historical and cultural context of a registered name and retains the meaning of the GI where literal translation would otherwise attract inaccuracies.
Furthermore, the court held that consumer perspectives and marketplace literature are irrelevant in determining whether a translation of a GI ought to be protected, because these considerations would result in ambiguity and would be more relevant to determine whether a particular term has become generic.
On the evidence before the court, the court held that the respondent successfully met its requisite burden of proof that “Parmesan” was a translation of “Parmigiano Reggiano,” and thus dismissed the appeal.
This article was first published by the International Trademark Association on inta.org.