A recent legal case, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37, the Singapore Court of Appeal granted Consorzio’s application to register “Prosecco” as a Geographical Indication (“GI”) which designates wine originating from Italy. This represents a significant interpretation of the Geographical Indications Act 2014 (No. 19 of 2014 or “the Act”), particularly regarding the registrability of geographical indications.
A GI is a form of intellectual property right that aims to protect indications used in trade to identify goods associated with a specific geographical location and is typically attributable to a distinctive quality, reputation, or characteristic. This decision — the first of its kind for the Singapore Court of Appeal — establishes essential principles in the interpretation of the Act.
The primary purpose of a GI is to offer consumers confidence that products featuring a GI genuinely exhibit the distinctive qualities they are renowned for, qualities inherently tied to their geographical origin. Prominent GIs encompass well-known examples such as Champagne and Bordeaux concerning wines, and Grana Padano and Pecorino Romano concerning cheeses.
In the foregoing case, the appellant Consorzio di Tutela della Denominazione di Origine Controllata Prosecco applied to register “Prosecco” as a GI in Singapore on May 3, 2019 with respect to wines from “North East region of Italy,” including “entire territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice and Vicenza (the ‘Specified Region’).” See SCGA 37. The application was accepted and published in the Geographical Indications Journal under Geographical Indication No 50201900088S on June 21, 2019.
On September 9, 2019, the respondent Australian Grape and Wine Incorporated, filed a notice of opposition regarding the registration of “Prosecco” on two grounds:
- Under s 41(1)(f) of the GIA, the Application GI contained the name of a plant variety and was likely to mislead the consumer as to the true origin of the product; and
- Under s 41(1)(a) of the GIA, that the Application GI did not fall within the meaning of a “geographical indication” as defined in s 2(1) of the GIA.
See SCGA 37.
While the Australian Grape and Wine Incorporation’s opposition was originally dismissed, the trade association appealed the dismissal to the General Division of the High Court, which also dismissed the opposition to s 41(1)(a). However, the High Court determined that “Prosecco” inherently included the name of a plant variety and that the manufacture of “Prosecco” wines beyond the designated region could potentially cause confusion, especially considering the widespread production of wines labeled as “Prosecco” outside the Specified Region. The appellant appealed the case which was reviewed by the Court of Appeals.
The Court of Appeals reviewed s 41(1)(f) and determined that the analysis entailed a two-step approach. Namely:
- Does the GI contain the name of a plant variety or an animal breed;
- If so, does the GI lead consumers to believe that the product exclusively comes from the Specified Region, even though its actual origin could be elsewhere where the plant variety or animal breed used to make the product could be found?
In a very interesting analysis, the Court of Appeals found that the evidence presented by Australian Grape and Wine Incorporation did not establish that a consumer in Singapore was likely to be mislead by the name “Prosecco.” In short, the Court noted that the respondent did not produce any evidence, such as consumer surveys, and relied instead on advertising materials as well as statistics that demonstrated an increase in the volume of Australian “Prosecco” that was imported in Singapore. The Court reasoned that, while advertising materials may be useful to provide some evidence to show how a GI has been marketed to a consumer, surveys would have been a more direct way to determine whether a consumer was misled.
For more information on wine or alcohol law, please contact Lindsey Zahn.
DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice
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