Singapore rejects Prosecco wine GI registration upon appeal by Australian group
06 April 2022
The word “Prosecco” cannot be registered as a geographical indication (GI) in Singapore to label wines exclusively originating from certain regions in Italy, according to the latest decision of the High Court of Singapore. The application was filed by the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, an Italian association which aims for the legal protection of the term “Prosecco” as a controlled designation of origin. Australian Grape and Wine Incorporated (AGWI), an organization of Australian wine grape and wine producers, opposed the application. Although the Intellectual Property Office of Singapore (IPOS) granted the application in 2021, upon appeal by AGWI, the decision was reversed by the High Court with decision grounds issued in February 2022.
GIs are used to signify a specific geographical origin of a product, and that the product possesses certain qualities or reputation essentially due to such origin. In this case, for example, the applicant tried to register the word “Prosecco”, which refers to a type of white wine made from the Prosecco grape, to identify wine products produced in specific regions in Northeast Italy exclusively. Although the wine is named after the village of Prosecco in Trieste, Italy, it has been produced in other countries such as Australia, Argentina, Brazil and Romania using the same grape variety since the 2000s.
AGWI opposed the application based on two reasons. Firstly, the indication contains a name of a plant variety, the Prosecco grape, and AGWI claimed it is likely to mislead consumers about the true origin of the product. Secondly, they argued that the term “Prosecco” does not fall within the definition of GI. In the initial ruling by IPOS, the opposition was dismissed as neither of the two reasons was accepted. Upon appeal, AGWI successfully opposed the application with the first reason accepted by the High Court.
“The High Court took a different view from the Intellectual Property Office of Singapore’s registrar on the issue of whether consumers would be misled by registration of ‘Prosecco’,” said Esther Seow, a principal, and Benita Lau, a trademarks associate at Davies Collison Cave in Singapore.
“The registrar concluded that this was unlikely based on the evidence, including evidence of the reputation of Italian ‘Prosecco’ in Singapore. In contrast, the High Court was satisfied by the AGWI’s evidence showing that the ‘Prosecco’ grape variety had been cultivated in significant quantities in countries other than Italy. Accordingly, the court concluded that registration of ‘Prosecco’ for wine originating only from certain regions of Italy would be likely to mislead consumers.”
“There are significantly fewer reported decisions on GIs as compared to other IP rights in Singapore, in part because the GI Registry was only established in 2019. This decision highlights the importance of filing sufficient and suitable evidence in an opposition or other proceedings. Ideally this would include factual evidence relating to the goods in question, as opposed to relying primarily on legal submissions and evidence from academics,” they said.
Ivy Choi
