“Prosecco” geographical indication proceeds to registration in Singapore

In a recent decision on 4 May 2021, Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco v. Australian Grape and Wine Inc., the Intellectual Property Office of Singapore (IPOS) found that a geographical indication application for “Prosecco” originating from Italy would be granted, and an opposition by an Australian manufacturer would fail on all grounds.

Background

In May 2019, the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (Applicant), a consortium established and organised under the laws of Italy, applied to register as a geographical indication (GI) in Singapore, the name “Prosecco” in respect of wines “located in the North East region of Italy, and includes the entire territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice and Vicenza” (the Specified Region).

Subsequently in September 2019, Australian Grape and Wine Incorporated (Opponent), the representative body for grape growers and winemakers in Australia, filed an opposition against the registration of the Applicant’s GI.

The grounds of opposition mounted by the Opponent were that:

• the GI “contains the name of a plant variety… and is likely to mislead the consumer as to the true origin of the product” pursuant to section 41(1)(f) of the Geographical Indications Act (GI Act)
• the GI “does not fall within the meaning of “geographical indication” as defined in section 2 pursuant to section 41(1)(a) of the GI Act.

What was the decision?

In the recent May 2021 decision, the Principal Assistant Registrar (PAR) in Singapore rejected the Opponent’s opposition to the Applicant’s GI application.

In reaching this decision, the PAR considered the GI application was unlikely to mislead consumers as to the “true origin of the product” based on the following factors:

• “Prosecco” has been used as the name of a grape variety since at least 1773. Though originating from Italy, it has since left its cradle of origin and is now cultivated in commercial quantities in other countries such as Australia
• Australian “Prosecco” has been sold alongside Italian “Prosecco” from the Specified Region for at least four years in Singapore
• consumers of “Prosecco” are more likely to pay a “relatively high degree of attention” to where the wine is produced and the grape variety among other things
• it is common industry practice in Singapore for wines to be marketed and sold with accompanying descriptions of the country of origin of the wine, with the country of origin clearly indicated on every bottle of wine
• the length of time Italian “Prosecco” has been available in Singapore, as well as its popularity, reputation and renown, further reduces the likelihood of consumers being misled.

Further, it was held that the Applicant’s GI registration does fall within the meaning of section 2 of the GI Act, as it only requires the indication to be “used in trade to identify goods as originating from a place” and is not concerned with how the indication is perceived by consumers.

Key takeaways

It is clear from this case that when deciding GI applications, the IPOS will consider:

• whether the GI is likely to mislead the consumer as to the true origin of the product
• whether there is any evidence of consumers being misled – although not mandatory, such evidence, if available, would help to establish and strengthen this element for an opponent in the relevant ground of opposition.

Further, it is important to note that even though “Prosecco” is a grape variety, section 15(b) of the GI Act does not prohibit the registration of GIs that are identical to the names of plant varieties.

As such, when applying for or opposing a GI application, it is important to be armed with the facts and consider the circumstances of the case at hand, in order to craft the appropriate arguments for the GI and jurisdiction in question.

Authors: Dan Pearce, Madeleine Griffiths and Yini Chong

Disclaimer
The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this article is accurate at the date it is received or that it will continue to be accurate in the future.

Published by:

Dan Pearce

Madeleine Griffiths

Yini Chong

Share this