IPOS allows registration of “Prosecco” as a geographical indication
In the recent Intellectual Property Office of Singapore (“IPOS”) decision of Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco v Australian Grape and Wine Inc [2021] SGIPOS 4, the Principal Assistant Registrar (“PAR”) decided that “Prosecco”, which was the name of a plant variety, could be considered a geographical indication under the Geographical Indications Act 2014 (“GIA”), and that it was not likely to mislead consumers as to the true origin of the product.
Facts
The applicant, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, a consortium established in Italy representing producers of Italian sparkling wine, applied to register the name “Prosecco” as a geographical indication in respect of wines originating from the northeast region of Italy. The opponent, Australian Grape and Wine Incorporated, the representative body for grape growers and winemakers in Australia, filed an opposition against the subject registration.
Opponent’s arguments
The opponent opposed the registration of “Prosecco” as a geographical indication on two grounds under the GIA.
First, pursuant to section 41(1)(f) of the GIA, the opponent submitted that “Prosecco” contains the name of a plant variety and was therefore likely to mislead consumers as to the true origin of the product as the name “Prosecco” was in fact the name of a grape variety used to produce wines which could originate from Australia. As such, the registration of “Prosecco” as a geographical indication for sparkling wines originating from the northeast region of Italy would be likely to mislead consumers that wines made from the Prosecco grape variety can only refer to wines from that region, when such wines can and do also originate from Australia.
Secondly, the opponent further submitted that “Prosecco” does not fulfil the definition of “geographical indication” as pursuant to section 2 of the GIA, a geographical indication is defined as any indication used in trade to identify goods as originating from a place, provided that, among other things, a given quality, reputation, or other characteristic of the goods is essentially attributable to that place. The opponent argued that, at the date of registration, the average Singaporean consumer would have regarded the “Prosecco” term as a generic term for a type of sparkling wine made from the Prosecco grape variety, and would not have identified it as originating exclusively from northeast Italy. Furthermore, the opponent submitted that “Prosecco” does not have any quality, reputation, or other characteristic that is essentially attributable to northeast Italy, as the qualities of “Prosecco” wine are owed to the underlying grape variety and not to the region.
Likelihood of misleading consumers
While the PAR found that “Prosecco” was indeed the name of a grape variety that is used to make wines that originate from both Australia and Italy, the PAR held that registering “Prosecco” as a geographical indication for wines from northeast Italy was not likely to mislead consumers as to the true origin of the product. Several reasons were provided by the PAR to support this finding:
- Although Australian “Prosecco” wines have been sold alongside “Prosecco” wines from northeast Italy for at least four years before the date of registration, no evidence was lodged to show that consumers have actually been misled.
- Consumers of wines are likely to pay a relatively high degree of attention to the country of origin of the wines they consume, as it is a matter that affects consumer preference.
- It is common industry practice for wines in Singapore to be marketed with accompanying descriptions of the country of origin of the wine, with it clearly indicated on every bottle of wine, reducing the likelihood of consumers being misled.
- The length of time Italian “Prosecco” wine has been available in Singapore, as well as quantities of export to Singapore, far exceeds that of Australian “Prosecco” wines. Thus, the popularity, reputation and renown of Italian “Prosecco” wines reduces any likelihood of consumers being misled.
- The use of the “Prosecco” grape variety appeared to be confined to Australia and Italy, and as such is not so widespread and pervasive so as to increase the likelihood of the consumer being misled.
Definition of “geographical indication”
The PAR held that the definition of a “geographical indication” as provided in section 2 of the GIA merely requires the indication to be “used in trade to identify goods as originating from a place”, and is not concerned with whether the indication is a generic term for a type of product. Accordingly, the PAR was satisfied that the “Prosecco” term has been used in trade to identify goods as originating from northeast Italy.
The PAR dismissed the opponent’s submission that “Prosecco” wine from northeast Italy does not have any characteristics essentially attributable to the region, as the submission relied on a single report which was prepared at the request of the opponent and could be biased. Further, as the writer(s) of the report did not swear an oath as to the veracity of the report’s contents, the PAR did not attach weight to the report, and accordingly found that the opponent had not discharged its burden of proof on that point.
Impact of decision
This decision shows that a geographical indication does not necessarily have to be unique to the specified region in order to be registrable. Opposing a geographical indication solely on the basis that it is the name of a plant variety will not succeed if the indication is also used in trade to identify goods as originating from the specified region.
This decision is also a reminder of the importance of cogent factual evidence where a likelihood of misleading consumers is asserted. The factual particularities as to how the goods in question were marketed to and perceived by consumers played a large role in the PAR deciding whether or not consumers were likely to be misled.
Finally, the introduction of unsworn third party reports/opinions prepared at the behest of an opponent may not be given much weight.
