}

9 March 2022

Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco [2022] SGHC 33

In its recent decision of Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, the General Division of the Singapore High Court held that the registration of “Prosecco” as a geographical indication under the Geographical Indications Act 2014 (“GIA”) was likely to mislead the consumer as to the true origin of the product, and accordingly refused the registration of “Prosecco” as a geographical indication under section 41(1)(f) of the GIA.

Section 41(1)(f) of the GIA

Section 41(1)(f) of the GIA provides grounds for refusal of registration of a geographical indication. The provision reads as follows:

41(1) The following shall not be registered:

(f) a geographical indication which contains the name of a plant variety or an animal breed and is likely to mislead the consumer as to the true origin of the product.

Background

The respondent, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“Consorzio”), had applied to register “Prosecco” as a geographical indication in respect of wines originating from the northeast region of Italy. The appellant, Australian Grape and Wine Incorporated (“AGWI”), filed an opposition against the subject registration.

At first instance, the Intellectual Property Office of Singapore (“IPOS”) ordered that “Prosecco” may proceed to registration as a geographical indication (“IPOS decision”). Following AGWI’s appeal, the General Division of the High Court reversed the IPOS decision and refused the registration.

IPOS decision

Full grounds of the IPOS decision were issued on 12 August 2021 and the learned Principal Assistant Registrar (“PAR”) allowed the registration of “Prosecco” as a geographical indication.

The PAR was of the view that the relevant issue was whether “Prosecco” was the name of a grape variety as at the date of application. The PAR found that “Prosecco” was indeed the name of a grape variety due to it being listed as such in the 2013 edition of the “International List of Wine Varieties and their Synonyms” in countries such as Argentina, Australia and Bosnia-Herzegovina.

Nevertheless, the PAR held that “Prosecco” as a geographical indication was not likely to mislead consumers as to the true origin of the product. The PAR further 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 had been used in trade to identify wines originating from northeast Italy, notwithstanding the finding that “Prosecco” was a grape variety.

High Court decision

On appeal by AGWI, the General Division of the High Court reversed the IPOS decision and refused registration of “Prosecco” on 12 November 2021. The Grounds of Decision were issued on 23 February 2022.

The High Court held that a plain reading of section 41(1)(f) of the GIA indicates that the determination of whether a geographical indication contains the name of a plant variety or animal breed is a matter of objective fact and was not to be assessed from the perspective of consumers in Singapore.

Accordingly, the High Court held that the evidence pointed towards the conclusion that “Prosecco” was the name of a grape variety. The High Court also remarked that the EU’s renaming of the “Prosecco” grape variety to “Glera” was evidence that “Prosecco” was previously the name of a grape variety in Europe.

The High Court concluded that “Prosecco” would be likely to mislead consumer as to the true origin of the product as “the product” referred to in section 41(1)(f) of the GIA referred to the broader class of products to which the term sought to be registered as a geographical indication was applied, namely all “Prosecco” wines, and not just the particular class of products specified in the geographical indication application, namely “Prosecco” wines from northeast Italy.

In arriving at this conclusion, the High Court was of the view that the relevant question was whether “Prosecco” as a geographical indication was likely to mislead consumers into thinking that “Prosecco” wines could only originate from northeast Italy, when in fact their true origin could also be other geographical locations where the “Prosecco” grape variety was used in winemaking.

The High Court was of the view that as “Prosecco” grapes had been cultivated and “Prosecco” wines produced in significant or commercial quantities outside the region specified in the geographical indication, namely in Australia, the threshold for the geographical indication to be likely to mislead had been crossed. Consumers were likely to be misled by the geographical indication into thinking that all “Prosecco” wines originated from Northeast Italy, when in fact some “Prosecco” wines originated from Australia.

The High Court contrasted the “Prosecco” application in question with other registered indications, namely, “Conegliano Valdobbiadene - Prosecco”, “Conegliano - Prosecco” and “Valdobbiadene - Prosecco”, and opined that these indications were not liable to mislead consumers as to the true origin of the products they were used to designate as they could only originate from the towns stated in their respective indications.

Impact of the decision

The High Court’s decision establishes how both limbs of section 41(1)(f) of the GIA are likely to be interpreted by Singapore courts in future applications pursuant to the GIA.

As the determination of whether a geographical indication contains the name of a plant variety or animal breed is not assessed from the perspective of consumers in Singapore but is instead a matter of objective fact, any evidence that a geographical indication was once used, or is presently used, as the name of a plant variety or animal breed in any part of the world will be considered as part of this determination.

This decision also interprets “the product” in section 41(1)(f) of the GIA as referring to the broader class of products for which the geographical indication is being applied for, and not just the particular products specified in the geographical indication application.

Finally, the court remarked that for the purposes of section 41(1)(f) of the GIA, where a product covered by the geographical indication has left its cradle of origin and is being produced in significant or commercial quantities outside of the originating place indicated by the geographical indication, such a geographical indication is likely to mislead consumers in Singapore, and consequently unregistrable.

Reference materials

The judgment is available on the Singapore Courts website judiciary.gov.sg.