Prosecco ruling Singapore
In a groundbreaking decision, the Singapore Court of Appeal, in Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37, has given the green light for the registration of “Prosecco” as a geographical indication under the Geographical Indications Act 2014 (“GIA”).
This marks the first instance where the Court of Appeal has delved into the operation and interpretation of sections within the GIA, with particular emphasis on section 41(1)(f), which prohibits the registration of a geographical indication likely to mislead consumers about the true origin of the product, mainly when it contains the name of a plant variety or an animal breed.
Background
The case unfolded when Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“Consorzio”) sought to register “Prosecco” as a geographical indication for wines from the northeast region of Italy. Australian Grape and Wine Incorporated (“AGWI”) opposed the registration, leading to a legal battle.
Initially, the Principal Assistant Registrar allowed the registration, but the General Division of the Singapore High Court overturned this decision, refusing the registration. Consorzio appealed against the High Court ruling.
Decision of the Court of Appeal
The Court of Appeal, in alignment with the High Court, emphasized two conjunctive requirements under section 41(1)(f): the geographical indication must contain the name of a plant variety, and it must likely mislead the consumer about the true geographical origin, not the plant origin, of the product.
On whether “Prosecco” contains the name of a plant variety, the Court held that the threshold is not high, requiring only recognition as the name of a plant variety by a significant population. The evidence, including scientific journals and general usage, supported AGWI’s claim that “Prosecco” was objectively the name of a grape variety.
Regarding whether “Prosecco” was likely to mislead consumers about its geographical origin, the Court outlined three factors for consideration. It stressed that these factors are not exhaustive but serve as guidance.
The Court found that AGWI failed to prove that the registration of “Prosecco” would mislead consumers. Evidence, such as advertising materials and statistics on imported “Prosecco,” was deemed insufficient. The Court suggested that consumer surveys could be a more direct method but cautioned that proper evidence of survey methodology should accompany such submissions.
Impact of the Decision
The Court of Appeal’s ruling has set a precedent for interpreting both limbs of section 41(1)(f) of the GIA in future applications. The decision clarified the assessment of evidence, highlighting that advertising materials and sales numbers alone are insufficient to demonstrate consumer deception.
The Court of Appeal distinguished geographical indications from trademarks, emphasizing their distinct nature. Additionally, it rejected the application of EU principles to interpret the GIA, highlighting the unique aspects of Singapore’s geographical indication protection model.
The judgment is available on the Singapore Courts website (www.judiciary.gov.sg) for further details.
