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High Court of Singapore (General Division) [2022]: Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco [2022] SGHC 33

 Session 3: Emerging Issues in Geographical Indications

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

Session 3: Emerging Issues in Geographical Indications

High Court of Singapore (General Division) [2022]: Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco [2022] SGHC 33

Date of judgment: February 23, 2022
Issuing authority: High Court of Singapore (General Division)
Level of the issuing authority: First judicial instance [on appeal from an administrative decision]
Type of procedure: Judicial (Civin( �br> Subject matter: Geographical Indications
Opponent/Appellant: Australian Grape and Wine Inc
Applicant/Respondent: Consorzio di Tutela della Denominazione di Origine Controllata Prosecco
Keywords: Geographical indications, Opposition to registration, Likely to mislead consumer as to origin

Basic facts: The appeal arises out of an application (“the Application”) made by the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“the Consorzio”) to register “Prosecco” as a GI denoting wine originating from a specified region in Northern Italy (“the Application GI”).

The Consorzio is a consortium established and organised under the laws of Italy, and is responsible for protecting, promoting, marketing and generally overseeing the use of the term “Prosecco”. On May 3, 2019, it applied to register “Prosecco” as a GI in respect of wines in Singapore. The claimed geographical area for the production of “Prosecco” wines was “the North East region of Italy, and include[d] the entire territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice and Vicenza” (“the Specified Region”). The Application GI was accepted and published in the Geographical Indications Journal on June 21, 2019.

Australian Grape and Wine Incorporated (AGWI) is the representative body for grape growers and winemakers in Australia. On September 9, 2019, AGWI filed a notice of opposition against the registration of the Application GI. It is not disputed that Italian “Prosecco” wines have a longer history of local distribution. Australian “Prosecco” wines have been available in Singapore, albeit in smaller quantities, since at least 2015. The Consorzio asserts that “Prosecco” has been used in Singapore as a geographical indication for the Specified Region since at least 2010.

AGWI relied on two grounds in its opposition to the registration: first, section 41(1)(a) of the Geographical Indications Act (GIA), which prohibits registration of indications that do not fall within the meaning of “geographical indication” as defined in section 2(1) of the GIA; and second, section 41(1)(f) of the GIA, prohibiting registration of indications that contain the name of a plant variety and are likely to mislead the consumer as to the true origin of the product.

On May 4, 2021, the Principal Assistant Registrar (PAR), disagreeing on both grounds, dismissed AGWI’s opposition and ordered that the Application GI should proceed to registration. The PAR’s Full Grounds of Decision were issued on August 12, 2021. On September 6, 2021, AGWI applied for the PAR’s decision disallowing its opposition to the Application GI to be reversed.

Held: The High Court allowed AGWI’s appeal on the basis of section 41(1)(f) of the Geographical Indications Act, noting that sections 41(1)(f) and 41(1)(a) of the GIA are disjunctive and independent grounds for the refusal of registration.

Relevant holdings in relation to emerging issues in geographical indications: The High Court held that the PAR was correct to find that “Prosecco” was the name of a grape variety when the Application was filed (“the Relevant Date”), in view of the extensive evidence adduced by AGWI in support of this proposition. In particular, wine traders in Singapore consistently referred to “Prosecco” as the name of a grape variety. Although much of the material AGWI relied on came from sources outside Singapore, this material nevertheless provided evidence that “Prosecco” was, as a matter of fact, the name of a grape variety as at the Relevant Date. Accordingly, the High Court found that the Application GI contained the name of a plant variety for the purposes of the first limb of section 41(1)(f) of the GIA.

Regarding whether the Application GI was likely to mislead the consumer as to the true origin of the product, the High Court considered the relevant question to be whether the Application GI was likely to mislead consumers into thinking that “Prosecco” wines could only originate from the Specified Region, when in fact their true origin could be other geographical locations where the “Prosecco” grape variety was used to make wines. The High Court agreed with AGWI that the Application GI, containing as it did the name of a grape variety, would be misleading if “Prosecco” grapes had been cultivated and “Prosecco” wines produced in significant or commercial quantities outside the Specified Region. Further, the High Court was satisfied that as at the Relevant Date, “Prosecco” grapes were being cultivated and “Prosecco” wines were being produced in commercial quantities in countries such as Australia, as found by the PAR. Thus, the High Court held that consumers were likely to be misled by the Application GI into thinking that all “Prosecco” wines originated from the Specified Region in Italy, when in fact some “Prosecco” wines originated from Australia.

Regarding whether the ground for refusal of registration in section 41(1)(a) of the GIA was established, the High Court deemed the crucial issue to be whether “a given quality, reputation or other characteristic of the goods is essentially attributable to that place,” as required in limb (b) of the definition of a “geographical indication” in section 2(1) of the GIA. Having proffered no factual evidence to support its assertion that the sole unifying factor in the wines in the market marked as “Prosecco” was their grape variety, the High Court held that AGWI did not produce sufficient evidence to satisfy its burden of proof on this limb.

Relevant legislation:
Geographical Indications Act 2014 (Act 19 of 2014)
Order 55 of the Rules of Court (2014 Rev Ed)
Rule 7 of the Supreme Court of Judicature (Geographical Indications) Rules 2019 (S 706/2019)