Case Details
- Citation: [2021] SGIPOS 9
- Court: Intellectual Property Office of Singapore
- Date: 2021-08-12
- Judges: Ms Tan Mei Lin, Principal Assistant Registrar of Geographical Indications
- Plaintiff/Applicant: Consorzio di Tutela della Denominazione di Origine Controllata Prosecco
- Defendant/Opponent: Australian Grape and Wine Incorporated
- Legal Areas: Geographical Indications – Opposition to Registration
- Statutes Referenced: Geographical Indications Act 2014 (Singapore)
- Cases Cited: [2021] SGIPOS 4
- Judgment Length: 24 pages, 7,491 words
Summary
This case concerns the registration of "Prosecco" as a geographical indication (GI) in Singapore. The Applicant, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, a consortium from Italy, applied to register "Prosecco" as a GI for wines. The Opponent, Australian Grape and Wine Incorporated, objected to the registration, arguing that "Prosecco" is the name of a grape variety rather than a GI.
The key issue was whether "Prosecco" can be both the name of a grape variety and a GI. The Hearing Officer found that while "Prosecco" is indeed the name of a grape variety, it can still be registered as a GI in Singapore unless it is likely to mislead consumers as to the true origin of the products. On the evidence, the Opponent failed to show that consumers would be misled, so the opposition was dismissed and the "Prosecco" GI was allowed to proceed to registration.
What Were the Facts of This Case?
On 3 May 2019, the Applicant, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, applied to register "Prosecco" as a geographical indication (GI) in Singapore. The claimed geographical area was "the North East region of Italy, and includes the entire territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice and Vicenza".
The Opponent, Australian Grape and Wine Incorporated, filed a notice of opposition on 9 September 2019. The Opponent argued that "Prosecco" is the name of a grape variety, not a GI, and therefore cannot be registered as a GI in Singapore.
The Applicant disagreed, contending that "Prosecco" is recognized worldwide as a GI and not the name of a grape variety. The Applicant asserted that "Prosecco" already enjoyed protection as an unregistered GI in Singapore before the filing of the application.
What Were the Key Legal Issues?
The key legal issue was whether "Prosecco" can be both the name of a grape variety and a GI. The Opponent argued that if "Prosecco" is the name of a grape variety, it cannot be registered as a GI under the Geographical Indications Act 2014 (Singapore).
The Hearing Officer had to determine whether "Prosecco" was still considered the name of a grape variety at the time of the application (the "Relevant Date" of 3 May 2019), even though the European Union had renamed the grape variety to "Glera" in 2009.
Additionally, the Hearing Officer had to consider whether the registration of "Prosecco" as a GI would be likely to mislead consumers as to the true origin of the products, which would prevent its registration under the Act.
How Did the Court Analyse the Issues?
The Hearing Officer first examined the evidence to determine whether "Prosecco" was still considered the name of a grape variety at the Relevant Date, despite the EU's renaming of the grape to "Glera".
The Hearing Officer found that while the EU had renamed the grape variety, this name change only applied within the EU. Looking at evidence outside the EU, the Hearing Officer was satisfied that "Prosecco" was still widely recognized as the name of a grape variety, particularly in countries like Argentina, Australia, and Bosnia-Herzegovina, as reflected in the International List of Vine Varieties published by the Organisation of International Vine and Wine.
The Hearing Officer acknowledged that Australia recognizes "Glera" as the official name of the grape variety, but also allows the use of "Prosecco" as the national name for the same grape. Australian wines made from the "Prosecco" grape variety have also been exported to Singapore since 1995.
Having established that "Prosecco" is the name of a grape variety, the Hearing Officer then considered whether this fact alone would prevent its registration as a GI under the Singapore law. The Hearing Officer found that the Act does not preclude the registration of a term that is also the name of a grape variety, as long as it is not likely to mislead consumers as to the true origin of the products.
What Was the Outcome?
The Hearing Officer dismissed the opposition, finding that the Opponent had failed to establish that the registration of "Prosecco" as a GI would be likely to mislead consumers as to the true origin of the products.
While the Hearing Officer acknowledged that Australian "Prosecco" wines have been sold in Singapore, the evidence did not show that consumers would be misled into thinking that all "Prosecco" wines must originate from the specified region in Italy. Therefore, the "Prosecco" GI application was allowed to proceed to registration.
Why Does This Case Matter?
This case is significant as it is the first full hearing under Singapore's Geographical Indications Act 2014. The decision provides important guidance on the registration of GIs, particularly in situations where the term sought to be registered is also the name of a grape variety.
The Hearing Officer's analysis of the international recognition of "Prosecco" as a grape variety name, despite the EU's renaming, highlights the need to consider the global context when assessing GI applications. This approach ensures that the registration of GIs in Singapore does not unduly restrict the use of common grape variety names.
The case also underscores the importance of the "likelihood of misleading consumers" test in the Act. Even if a term is the name of a grape variety, it can still be registered as a GI as long as it is not likely to mislead consumers about the true origin of the products. This balances the protection of GIs with the interests of consumers and other producers.
Legislation Referenced
Cases Cited
- [2021] SGIPOS 4
Source Documents
This article analyses [2021] SGIPOS 9 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.