Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Applicant) sought to register “Prosecco” as a Geographical Indication (GI) in Singapore for wines originating from certain areas of Italy.
Australian Grape and Wine Incorporated (the Opponent) opposed the application on two grounds under Singapore’s Geographical Indications Act (GIA):
- “Prosecco” contains the name of a plant variety and is likely to mislead consumers as to the true origin of the product; and
- “Prosecco” does not meet the definition of a GI in the GIA.
On 4 May 2021, the Intellectual Property Office of Singapore dismissed the opposition on both grounds (Australian Grape and Wine Incorporated v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco  SGIPOS 4).
This decision clarifies that the definition of a GI in the GIA is not concerned with whether consumers perceive the indication as a generic term. IPOS also found that consumers were not misled as to the origin of the wines.
The Opponent claimed that Singaporean consumers would not recognise “Prosecco” as a term for wine originating only from specified areas of Italy, since countries like Australia also produce “Prosecco” wines.
Based on the evidence lodged, the Registrar concluded that:
- There was no evidence of Singaporean consumers being misled;
- Consumers would likely pay attention to the country of origin when purchasing wine;
- Traders usually identify the country of origin of wine;
- Italian “Prosecco” has a reputation in Singapore due to continuous sales since 2010, which outweighed sales of Australian “Prosecco”;
- The evidence did not establish widespread use of “Prosecco”.
The Registrar held that there was no likelihood of misleading consumers as to origin.
“Prosecco” satisfies the definition of a GI
The Opponent argued that “Prosecco” is a generic term and that the quality, reputation and/or characteristics of “Prosecco” wines are attributable to the underlying grape variety, also known as “Glera”, rather than conditions of certain geographical areas.
The Registrar decided that “Prosecco” falls within the definition under Section 2 of the GIA, which requires the indication to be “used in trade to identify goods as originating from a place, and where a quality, reputation or characteristic of the goods is essentially attributable to that place”. Section 2 is not concerned with how the indication is perceived by consumers and whether it is a generic term.
Accordingly, the opposition was unsuccessful. No appeal has been filed as of the date of this article.
This article was first published by the International Trademark Association on inta.org.
Update: The Opponent’s appeal to the High Court of Singapore was successful. Please click here to read more.