The Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“Consorzio”), an Italian consortium that oversees use of the term “Prosecco”, had applied to register “Prosecco” as a Geographical Indication (“GI”) in Singapore for wines produced in certain areas of Italy.
This application was opposed by Australian Grape and Wine Incorporated (“AGWI”), which represents Australian grape growers and winemakers, on two grounds:
- Ground 1: “Prosecco” contains the name of a plant variety and is likely to mislead consumers as to the true origin of the product.
- Ground 2: “Prosecco” does not fall within the definition of a GI.
The Intellectual Property Office of Singapore dismissed this opposition on both grounds (click here to read more). Upon appeal to the High Court, the opposition succeeded based on Ground 1.
AGWI established that (a) “Prosecco” contains the name of a plant variety, and (b) “Prosecco” is likely to mislead consumers as to the true origin of the product.
- Name of plant variety
Both the High Court and Registrar concluded that “Prosecco” is the name of a grape variety.
Whether Singaporean consumers subjectively perceived “Prosecco” as the name of a variety was irrelevant as this element is established through an objective inquiry. The Consorzio’s arguments that “Glera” rather than “Prosecco” was the correct term of reference were also rejected as the change of name only applied in the EU.
- Likelihood of misleading consumers
The findings of the High Court and Registrar diverged on the issue of whether consumers would be misled.
The Registrar concluded that there was no likelihood of consumers being misled because of:
- Local “Prosecco” wine traders specifying the region of production in marketing;
- The level of attention paid by wine consumers; and
- The reputation of Italian “Prosecco”, noting that sales since 2010 outweighed that of Australian “Prosecco”.In contrast, the High Court held that:
- Traders use differentiating markings and consumers pay attention to avoid confusion as to product origin;
- The “Prosecco” grape variety had been cultivated in “significant and commercial quantities in other countries for wine-making”; and
- As the evidence established concurrent use of “Prosecco” for different locations, registration as a GI would mislead consumers into thinking that the relevant goods only originate from the claimed region.
Accordingly, AGWI succeeded in establishing Ground 1.
AGWI also submitted that “Prosecco” does not satisfy the definition of a GI under Singapore’s GI Act:
“any indication used in trade to identify goods as originating from a place, provided that –
- the place is a qualifying country or a region or locality in a qualifying country; and
- a given quality, reputation or other characteristic of the goods is essentially attributable to that place”
The High Court stated that the absence of expert factual evidence was a “fundamental weakness” in AGWI’s case. Arguments and evidence from academics, as opposed to evidence from wine experts, could not establish that the sole unifying factor in “Prosecco” wines was the underlying grape variety rather than geographical location or method of production.
The High Court accepted the Consorzio’s evidence showing that “Prosecco” identified wines produced in a specified region in Italy and that relevant characteristics of “Prosecco” wine were attributable to this region, therefore “Prosecco” fell within the definition of a GI. This definition does not require an indication to identify goods as originating exclusively from a location.
This decision illustrates the differences between these distinct grounds of opposition. While evidence of sales of Australian “Prosecco” was sufficient to establish a likelihood of consumers being misled if “Prosecco” were registered as a GI, the same evidence failed to establish that “Prosecco” was not a GI, as defined under the relevant Act. Nevertheless, AGWI succeeded on the opposition by establishing one of the two grounds pleaded.