In more detail
Under the Geographical Indications Act 2014, protection is extended to the translations of registered geographical indications. If third parties have issues relating to any possible translations of geographical indications, they can file a request for qualification, which is similar to an opposition hearing.
The Requester filed the request for qualification on only one basis, that "Parmesan" is not a translation of the Registered GI. Notably, the Requester did not plead that the term "Parmesan" is generic.
The registrar found that the Opponent discharged its burden of proof that "Parmesan" is a translation of the Registered GI. In coming to this conclusion, the registrar agreed with the Opponent that the critical issue is the translation of "Parmigiano Reggiano" in Italian to "Parmesan" in English. The Opponent relied on the dictionary meaning of "Parmigiano Reggiano," which is defined as "another name for Parmesan cheese" in English according to the Collins Dictionary.
Further, the registrar held that whether a term or phrase is a translation does not depend on how the terms are used in the marketplace. In this case, the wide variety of "Parmesan" cheese products available in the market is irrelevant to the ground that the Requester pleaded.
Key takeaway
This decision highlights the importance of pleadings, and that parties should ensure that their supporting evidence matches the corresponding grounds of pleadings. It is imperative to consider what grounds to plead, the prospects of success under each ground and what to include in the pleadings to support each ground.
The Requester's evidence attempted to show the broad range of "Parmesan" cheese products, which may be relevant if the pleaded ground was that "Parmesan" is or has become generic. However, as the Requester only confined its pleadings to the ground on translation, the registrar did not need to consider the issue of whether "Parmesan" is generic.
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