In Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated  SGCA 37, the Court of Appeal allowed the Consorzio’s application to register “Prosecco” as a geographical indication (“GI”) designating wine from Italy to proceed to registration.
This marks the first time that the Court of Appeal has had to interpret various provisions in the Geographical Indications Act 2014 (No. 19 of 2014) (“GIA”), in particular the provisions pertaining to the registrability of geographical indications.
This case update sets out a brief introduction to the Singapore GI regime and discusses the Court of Appeal’s ground-breaking decision.
A GI is a form of intellectual property right, meant to protect indications used in trade to identify goods which possess a given quality, reputation or characteristic, which is essentially attributable to a particular geographical location.
The function of the GI regime is to provide assurance to consumers that products bearing a GI truly carry the characteristics for which they are known for, and which are attributable to their geographical origin. Well-known GIs include Champagne and Bordeaux in relation to wines, as well as Grana Padano and Pecorino Romano in relation to cheese.
As part of its obligations under various international treaties, Singapore has instituted a legislative framework for the registration and protection of GIs. Under the GIA, any person carrying on activity as a producer in the particular geographical region (or such association or authority with responsibility for the same) may apply for registration for a GI. Once a GI application is accepted for publication by the Intellectual Property Office of Singapore (“IPOS”), third parties may file an opposition to the registration of the GI. This process is similar to the trade mark opposition system in Singapore.
The appellant, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“Consorzio”), had applied to register “Prosecco” as a GI in respect of wines originating from the North East region of Italy (the “Specified Region”).
The respondent, Australian Grape and Wine Incorporated (“AGWI”), sought to oppose the registration of “Prosecco” as a GI on two grounds:
At the first instance, the Principal Assistant Registrar from IPOS dismissed AGWI’s opposition on both grounds.
AGWI then appealed to the General Division of the High Court, where the Judge dismissed AGWI’s opposition under s 41(1)(a) GIA. The Judge found that AGWI had not adduced sufficient evidence to prove its assertion that the quality and characteristics of “Prosecco” wines are solely attributable to the grape variety, rather than the terrain, climate and production methods in the Specified Region.
However, the Judge allowed AGWI’s appeal under s 41(1)(f) GIA. The Judge found that “Prosecco” objectively contained the name of a plant variety, and that the production of “Prosecco” wines outside the Specified Region would render “Prosecco” likely to mislead given the commercial production of wines labelled “Prosecco” outside the Specified Region (i.e., in Australia).
At the Court of Appeal, only the Consorzio appealed against the Judge’s decision in relation to s 41(1)(f) GIA. AGWI did not dispute the Judge’s decision in relation to s 41(1)(a) GIA.
In its decision, the Court of Appeal found that the correct approach under s 41(1)(f) GIA entailed a two-step inquiry:
The analysis of the first limb was a point of contention between the parties because of the history behind the “Prosecco” name.
Having considered the parties’ arguments, the Court of Appeal made the following findings:
Applying these principles above, the Court of Appeal found that the first limb of the test had been met. The Court considered that, prior to 1 August 2009 when the grape variety was renamed “Glera”, “Prosecco” was recognised as the name of a grape variety in the EU as well as in a reputable publication.
In relation to the second limb, the Court of Appeal found that the awareness of the Singapore consumer was of critical importance. In particular, three factors must be taken into account in the inquiry:
The Court of Appeal emphasised that while these three factors were relevant, it is not an exhaustive list of factors that may be taken into consideration under s 41(1)(f) GIA.
On the evidence, the Court of Appeal found that AGWI did not establish that the Singapore consumer was likely to be misled by the name “Prosecco”. In particular:
Given the above, the Court of Appeal held that AGWI had failed to establish that “Prosecco” was likely to mislead the Singapore consumer as to the true geographical origin of the product.
This decision provides welcome guidance to those seeking to register, or oppose the registration of, GIs in Singapore. Importantly, it sets out:
when assessing a challenge under s 41(1)(f) GIA.
The Bird & Bird team comprising Anan S. Sivananthan (Partner), Teo Tze She (Associate) and Brendan Loy (Associate) from Singapore, as well as Giovanni Galimberti (Partner) and Alessandro Sciarra (Trademark Attorney) from Italy represented the Consorzio in this matter.
This article is produced by our Singapore office, Bird & Bird ATMD LLP. It does not constitute as legal advice and is intended to provide general information only. Information in this article is accurate as of 16 November 2023.
Dec 07 2023
Dec 07 2023