Consorzio del Formaggio Parmigiano Reggiano v U.S. Dairy Export Council [2019] SGIPOS 12

Summary of Facts

Consorzio Del Formaggio Parmigiano Reggiano (“the Applicant”) applied to register the geographical indication (“GI”) “Parmigiano Reggiano” (“the GI Application”). The GI Application was accepted and published for opposition purposes on May 10, 2019.

The deadline to file a notice of opposition was June 21, 2019. On June 10, 2019, U.S. Dairy Export Council (“the Opponent”) requested an extension of time “for up to 6 months” to file its notice of opposition.

The Registrar objected to the Opponent’s request for an extension of time because the Opponent’s stated justification for the extension — requiring more time to prepare the evidence in support of the opposition — failed to show a good and sufficient reason for the extension. The Registrar set a hearing date for July 23, 2019 to hear argument on the request for extension.

Issues and Decision of the Registrar

At the hearing, the Registrar denied the Opponent’s request for an extension of time for several reasons.

First, the Registrar opined that the GI Application is one of the items in a list of 196 GIs (“Annex 10-A GIs”) of interest to the European Union (“EU”) as set out in Annex 10-A of the European Union-Singapore Free Trade Agreement (“EUSFTA”) made public since January 21, 2013 pursuant to a public consultation in which the Opponent participated. Furthermore, the Opponent has undertaken a worldwide series of oppositions against the GI Application. The Registrar opined that the Opponent had ample time to prepare for any possible opposition action by the deadline of June 21, 2019.

Second, the Registrar reasoned that an extension of time could potentially delay the application of the EUSFTA and hinder Singapore companies from enjoying the benefits conferred by the EUSFTA.

Third, the Opponent’s objection was not to the GI Application (namely, “Parmigiano Reggiano”) itself but to a possible translation (namely, “parmesan”). The Registrar was of the view that an objection to a possible translation of a GI is not one of the grounds for refusal of a GI, which are set out in Section 41 of the Geographical Indications Act (“GIA”). It follows that the opposition, if allowed to proceed, would fail. Instead, the Opponent should have requested a qualification pursuant to Section 46 of the GIA which stipulates that any person (i.e., the Applicant or a third party) may request to qualify the rights of a registered GI in relation to (i) any name contained in the GI; or (ii) any term which may be a possible translation of the GI. A qualification of the rights may be useful to clarify the boundary between what is protected by the GI registration and what is available for use by third parties in relation to the GI.

Accordingly, the Registrar held that the Opponent had failed to show a “good and sufficient reason” for the requested extension of the time and denied the request. Consequently, the GI Application proceeded to registration.

A version of this article was first published in Innovate Magazine of AIPLA. For more information, please visit https://www.aipla.org/.