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