A. INTRODUCTION
Singapore law regarding geographical indications (“GIs”) has recently made significant strides, in no small part due to the two Court of Appeal (“CA”) decisions in Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Inc [2023] SGCA 37 (“CDOP v AGW”) and Fonterra Brands (Singapore) Pte Ltd v Consorzio del Formaggio Parmigiano Reggiano [2024] SGCA 53 (“FB v CFPR”).
A clear theme which has emerged is the importance of the perception of the average Singapore consumer of the use of GIs on or in relation to products.
B. THE IMPORTANCE OF CONSUMER PERCEPTION
Who is the average consumer?
The preliminary step is to identify the average Singapore consumer. The references to “consumer” in the Geographical Indications Act 2014 (“GIA”) refer to consumers in Singapore, i.e., citizens and residents and not those who are merely transient. The focus is the average Singapore consumer, and not those with specialist knowledge (CDOP v AGW at [49], [56]).
Consumer perception in CDOP v AGW
In CDOP v AGW, the CA considered an opposition against an application to register the GI “Prosecco”. The opposition was brought under section 41(f) GIA, and the key question was whether the GI contained the name of a plant variety and was likely to mislead the average consumer into thinking that “Prosecco” wine could only originate from the specified region, when in fact the true origin could be other locations where the “Prosecco” grape variety is used to make wine (CDOP v AGW at [55]).
The CA held that it is necessary to focus on matters which the average Singapore consumer is aware of, as such awareness affects whether they are likely to be misled. In particular, at least three factors must be considered (CDOP v AGW at [56]-[61]):
a. Whether the average Singapore consumer is aware that the name in question is the name of a plant variety (or an animal breed). This must be assessed objectively;
b. Whether the average Singapore consumer is aware that the plant variety (or animal breed) in question is involved in the production of the relevant product; and
c. What message the GI conveys to the average Singapore consumer. For example, a GI identical with the name of the plant variety would convey a very different message compared to a GI that contains other additional words (e.g., “Italian Prosecco”).
Accordingly, the CA dismissed the opposition because the evidence adduced by the opponent failed to establish that the average Singapore consumer was likely to be misled by the GI. Notably, the CA made the following findings in relation to the evidence adduced (CDOP v AGW at [68] to [74]):
a. The opponent attempted to rely on statistics showing the increased volume of Australian “Prosecco” imported into Singapore. However, such evidence did not shed light on the material inquiry, i.e., whether the average Singapore consumer would be misled. Instead, such evidence merely showed that local wine sellers were selling more Australian “Prosecco” than before;
b. The opponent also attempted to rely on Singapore advertising materials which marketed the wine “Prosecco” as produced with a grape variety called “Prosecco”. However, this was insufficient to establish that the average consumer would be misled as to the origin of the wine “Prosecco”, as there was no evidence of the extent of user engagement, and it was impossible to infer the sort of knowledge which the average Singapore consumer would have had of the name of the grape variety used to produce the wine “Prosecco”; and
c. The CA noted that consumer surveys would have been a more direct form of evidence. However, the CA cautioned that consumer surveys are not determinative, and parties relying on consumer surveys should also adduce evidence of how the surveys were conducted (e.g., what questions and demographics).
Consumer perception in FB v CFPR
In FB v CFPR, the CA considered an application for qualification of rights for the GI “Parmigiano Reggiano”. The application was brought under section 46(1)(b) read with section 46(2)(b) GIA, namely, a request that GI protection should not extend to the use of the term “Parmesan”, because “Parmesan” is not a translation of “Parmigiano Reggiano”.
The CA held that a translation must be known to the average Singapore consumer. How the translated term is known and used locally may impact this inquiry, in line with the overarching purpose of the GIA which is consumer protection (FB v CFPR at [49]).
The assessment of whether a translated term is known to the average Singapore consumer must be supported by credible evidence. Such evidence may come from a variety of sources, including but not limited to dictionaries, credible books and consumer surveys (FB v CFPR at [53] to [57]).
Applying the above, the CA found that “Parmesan” was not a translation of “Parmigiano Reggiano” and allowed the application. Notably, the CA made the following findings in relation to the evidence adduced (FB v CFPR at [58] to [81]):
a. Generally, dictionaries may be a helpful starting point. However, the foreign dictionary extracts adduced by the respondent were not definitive as they were compiled by foreign publishers who may not know the way the term “Parmesan” has been used in Singapore;
b. The applicant had adduced sufficient evidence that consumers in Singapore regard “Parmesan” and “Parmigiano Reggiano” as two different cheese products distinguishable by origin, including:
i. Product listings which showed “Parmesan” cheese marketed and sold in Singapore with clear indications that these products originated from outside Italy; and
ii. Online catalogues and e-commerce platforms in Singapore which categorised “Parmigiano Reggiano” cheese separately from “Parmesan” cheese.
The CA also noted that marketing practices can influence consumer awareness. However, the extent to which this may support an inference of consumer perception depends on the context, including the nature of the product as well the specific information conveyed by the materials (FB v CFPR at [66]).
C. KEY TAKEAWAYS
The increase in local jurisprudence relating to GIs provides welcome guidance. Businesses and other parties interested in the protection of GIs in Singapore should recognise the importance of the perception of the average Singapore consumer, and bear in mind the following:
a. Parties considering registering GIs in Singapore should do so early, before third parties have had the chance to influence the perception of the average Singapore consumer;
b. The manner in which products are packaged and advertised may have an important impact on how the average Singapore consumer perceives a GI (or translation thereof). Therefore, careful attention should be paid to how such terms are used on packaging and advertising;
c. Parties who wish to take a more proactive approach to shaping consumer perception may consider investing in the education of the general public in Singapore regarding the meaning of particular GIs (e.g., organising informative talks or workshops and/or posting informative social media content); and
d. If litigation becomes necessary, parties should be mindful of the CA’s findings relating to evidence, in particular:
i. As the law is concerned with the perception of the average Singapore consumer, the evidence should be Singapore-centric and consumer-centric;
ii. Where advertising materials are sought to be relied on, careful consideration should be given to what exactly these materials communicate to the average Singapore consumer; and
iii. Parties may consider conducting consumer surveys to bolster their cases.
Written by: Mr Tony Yeo, Ms Kit Kuan Yuen and Mr Loo Fang Hui
