“Prosecco” to be registered as a Geographical Indication in Singapore after first ever Court of Appeal decision on GIs

In Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] 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.

What is a GI?

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.

Background to the appeal

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:

• S 41(1)(a) of the GIA: that “Prosecco” did not fall within the meaning of a “geographical indication” as defined in s 2(1) of the GIA; and
• S 41(1)(f) of the GIA: that “Prosecco” contained the name of a plant variety and is likely to mislead the consumer as to the true origin of the product.

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.

Court of Appeal’s interpretation of s 41(1)(f) GIA

In its decision, the Court of Appeal found that the correct approach under s 41(1)(f) GIA entailed a two-step inquiry:

• First, one was to consider whether the name of the GI sought to be registered contains the name of a plant variety (or animal breed).
• If it did, the inquiry would move to whether the GI was likely to mislead consumers into thinking that the product could only originate from the specified region when, in fact, its true origin could be other geographical locations where the plant variety or animal breed used to make the product is found.

1. Whether the name of the GI is ‘the name of a plant variety’

   The analysis of the first limb was a point of contention between the parties because of the history behind the “Prosecco” name.

   • Historically, “Prosecco” was used as the name of a grape variety and of a wine in the European Union (“EU”).
   • However, as of 1 August 2009, “Prosecco” became recognised across the EU as a Protected Designation of Origin in respect of wine. Following this, the grape variety “Prosecco” was legally renamed “Glera”, and the term “Prosecco” was excluded from use (as a grape variety) in labelling and presentation on “Prosecco” sparkling wines.
   • The Consorzio’s position was hence that “Prosecco” was no longer the name of the grape variety at the time the “Prosecco” GI application was filed in Singapore on 3 May 2019.

   Having considered the parties’ arguments, the Court of Appeal made the following findings:

   • This first limb is a threshold requirement since the question of confusion would not arise if the GI does not contain the name of a plant variety.
   • However, the threshold to be crossed is not high. It is sufficient to show that the name in question is objectively recognised as the name of a plant variety by a not insignificant population of people.
   • Relevant evidence to prove the first limb may be derived from reputable scientific journals, legal registers of plant varieties, or from the general usage of the term as denoting a plant variety or an animal breed among a body of consumers or producers.
   • The Court of Appeal recognised the difficulties in cases such as the present, where the scientific or legal name of the plant variety has been changed over time. Nevertheless, the Court of Appeal took the view that a plant variety may be objectively known by different names by significant numbers of people. Since the threshold is not high, an opposition based on s 41(1)(f) GIA may succeed even if there is evidence to show that many people use the new name exclusively and consider the old name obsolete.

   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.

2. Whether the GI containing the name of a plant variety would mislead consumers as to the true geographical origin of the product 

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:

1. Whether the average Singapore consumer is even aware that the name in question is the name of a plant variety - if this was not shown, it would be unlikely that any operative deception would arise.
2. Whether the Singapore consumer is aware that the plant variety in question is involved in the production of the product over which GI protection is sought – in the context of the present case, the Court of Appeal noted that if the Singapore consumer was ignorant as to the type of grape used to produce “Prosecco” wines, it cannot be said that he/she would be misled as to the true geographical origin of “Prosecco” wine.
3. A GI that is identical to the name of a plant variety would convey a different meaning from a GI that contains other words in addition to the name of the plant variety– as an illustration, the GI “Bardsey” for cider, which is identical to the name of the plant variety, would convey a different image from the GI “Wales Bardsey” for cider.

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:

• AGWI sought to rely on statistics showing the increase in the volume of wines labelled as “Prosecco” imported from Australia into Singapore. However, the Court of Appeal found that such evidence did not shed light on the first material inquiry, i.e., whether Singapore consumers are aware that “Prosecco” is the name of a grape variety.
• AGWI also relied heavily on advertising materials to try to prove that Singapore consumers would be misled. This did not find favour with the Court of Appeal, as there was no evidence demonstrating the extent of user engagement with the advertising material. This made it impossible to infer the sort of knowledge which the Singapore consumer would have had of the name of the grape variety used to produce “Prosecco” wine.
• In any event, the Court of Appeal noted that the advertising materials produced by AGWI themselves showed that “Glera” was frequently used as the name of the grape variety for “Prosecco” wines marketed to the Singapore consumer.
• Lastly, the Court of Appeal noted that AGWI did not produce any evidence of consumer surveys which could have been direct evidence of whether Singapore consumers were likely to be misled by the name “Prosecco”.

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.

Commentary

This decision provides welcome guidance to those seeking to register, or oppose the registration of, GIs in Singapore. Importantly, it sets out:

1. some relevant factors for the test which the Singapore courts should apply; and
2. types of evidence which the Singapore courts may take into consideration

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.