The CoA’s decision

The CoA reasoned differently, finding that a “translation” must be known to the average consumer in Singapore, and that dictionary entries are not determinative.

Applying these principles, the CoA found Fonterra’s evidence persuasive in establishing that consumers in Singapore understand “Parmigiano Reggiano” to mean cheese originating from specific regions of Italy, whereas “Parmesan” cheese can originate from other countries or regions.

Fonterra’s evidence included:

• packaging for cheese sold in Singapore that featured the term “Parmesan” while identifying a country of origin other than Italy; and
• online catalogues in Singapore that categorise “Parmigiano Reggiano” as a separate product from “Parmesan”.

In view of this evidence, the CoA held that “Parmesan” is not a translation of “Parmigiano Reggiano”, and ordered the following qualification to be entered on the Register: “The protection of the geographical indication ‘PARMIGIANO REGGIANO’ should not extend to the use of the term ‘Parmesan’”.

Takeaways and wider implications

As a result of this decision, cheese products produced in any country can be marketed as “Parmesan” in Singapore, without infringing Consorzio’s GI registration for “Parmigiano Reggiano”.

Where else can “Parmesan” be used in this way, noting an increasing number of countries are implementing or expanding their GI protection regimes under the Lisbon Agreement, free trade agreements (FTAs), or otherwise?

In New Zealand (NZ), Consorzio has obtained registered protection for “Parmigiano Reggiano” under the Geographical Indications Registration Act (GI Act). This legislation came into effect on 1 May 2024 as part of NZ’s obligations under the NZ-European Union (EU) FTA. However, an exception had been negotiated for the use of “Parmesan” – traders that have continuously used “Parmesan” in good faith for at least 5 years before 1 May 2024 can continue using “Parmesan” with a legible and visible indication of the geographical origin of the product. We have previously discussed the changes introduced under NZ’s GI Act here.

In Australia, there is currently no sui generous legislation that affords GI protection for food products, although consumer laws and the certification mark system step into that breach. There remains potential for change as Australia has been negotiating an FTA with the EU since 2018. GI protection was one of the subjects of negotiation, but progress has stalled since 2023 for various reasons, including concerns about protecting certain GIs for foodstuffs, particularly in the dairy industry. During that time, there have been various proceedings before IP Australia and the Federal Court in relation to trade mark applications in Australia that contain or consist of the terms “Parmesan”, “Asiago” or “Gorgonzola”. Decisions in those matters have reflected that Australian consumers see these terms as descriptions of styles of cheese, as opposed to relating to these cheeses coming from specific European origins, suggesting such contentious GIs will only be afforded specific protection if the FTA with the EU is concluded.

The GI landscape continues to evolve throughout the Asia Pacific and there are still areas of legal uncertainty. Traders should take prompt action to keep up with changes and ensure access to market.