SINGAPORE – The High Court has ruled that “parmesan” is a translation of the Italian term “Parmigiano Reggiano”, the name of a hard, grainy cheese made from the milk of cows that graze in a specific part of northern Italy.
Intellectual property (IP) lawyers interviewed by The Straits Times say that while there is no immediate impact on traders, the implication of the court decision is that the word “parmesan” should be used only for cheese originating from the particular region in Italy.
The decision comes in a dispute between New Zealand-based dairy company Fonterra Cooperative Group – which markets “traditional style parmesan” under the Perfect Italiano brand – and a consortium of Parmigiano Reggiano producers set up in Italy in 1934.
Parmigiano Reggiano is named after the provinces of Parma and Reggio Emilia, where the cheese has been made since the 13th century. The name is legally protected in the European Union and can be used only for cheese produced in Parma, Reggio Emilia, Modena, Bologna to the left of the river Reno, and Mantua to the right of the river Po.
The case centres on “Parmigiano Reggiano” as a geographical indication (GI), a type of IP that identifies a product as having originated from a particular place that has given the item its unique qualities or characteristics.
In June 2019, the Consorzio del Formaggio Parmigiano Reggiano consortium succeeded in registering “Parmigiano Reggiano” as a GI in Singapore.
In September 2019, Fonterra filed a request with the Intellectual Property Office of Singapore to clarify that the legal protection does not extend to the term “parmesan”.
Fonterra’s request was on the basis that “parmesan” was not a translation of “Parmigiano Reggiano”.
In March 2020, the consortium filed an opposition to Fonterra’s request, contending that “parmesan” was a translation of “Parmigiano Reggiano” and therefore should be protected.
The consortium, represented by Mr Anan Sivananthan, pointed to dictionary entries to show how the term “Parmigiano Reggiano” is converted from Italian into “parmesan” in English.
Fonterra said it was concerned that the EU’s GI frameworks may have been “misused to unfairly monopolise the use of product names (such as parmesan) in common use in global cheese production for many decades”.
The company, represented by Mr Jon Chan, argued that consumer perception must be considered in determining the translation of a GI, and showed the array of “parmesan” cheese products available in the market.
The consortium succeeded in its opposition, prompting Fonterra to appeal to the High Court.
In a judgment issued on March 31, Justice Dedar Singh Gill said consumer perception is relevant to whether a GI has become a generic term, but Fonterra did not put forward the case that “parmesan” has become the generic name for “Parmigiano Reggiano”.
Instead, Fonterra relied solely on the ground that “parmesan” was not a translation of “Parmigiano Reggiano”.
For the purposes of a translation inquiry, consumer perception is generally irrelevant, said Justice Gill.
He reasoned that significant changes in meaning will be reflected in reputable dictionaries.
“Therefore, as long as a term is found to be a faithful translation of a registered geographical indication, it generally matters not what consumers within the marketplace perceive the words to refer to, as long as the term does not amount to the generic or common name for the good or service in question.”
A Fonterra spokesman told The Straits Times that it has applied for permission to appeal against the decision.
“Fonterra believes that ‘parmesan’ is not a translation of ‘Parmigiano Reggiano’ and that the term ‘parmesan’ should be free for all traders to use.”
Commenting on the court’s decision, IP lawyers said it implies that the GI should be extended to cover the use of the word “parmesan”.
Mr Gilbert Leong, head of Dentons Rodyk’s intellectual property and technology practice, said the use of the word “parmesan” to describe cheese would be an infringement of the GI if the goods were in fact not produced in the specified region.
He added: “If the consortium decides to take legal action, it would almost immediately be able to point to this decision to support its case.”
Amica Law associate director Marcus Liu said Singapore’s GI Act potentially allows use of translations of GIs, such as “parmesan”, if the translation is identical to the term commonly used to describe the goods, in this case, a generic hard dry cheese variety.
“It is important to note that this point was not determined in this case and remains a question to be determined by the court in potential future matters,” he added.
