This article is written by Akshay, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

The Intellectual Property Office of Singapore (IPOS) recently decided in Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco v. Australian Grape and Wine Inc. on 4 May 2021 that a geographical indication application for “Prosecco” from Italy would be granted, and opposition by an Australian manufacturer would fail on all grounds.

Background

In May 2019, the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (Applicant), an Italian consortium, applied to register the name “Prosecco” as a geographical indication (GI) in Singapore for wines “from the North East region of Italy, including the entire territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice, and Vicenza” (the Specified Region).
In September 2019, the representative group for grape farmers and winemakers in Australia, Australian Grape and Wine Incorporated (Opponent), filed a protest to the Applicant’s GI being registered.
The opponent’s grounds for objection were as follows;

According to Section 41(1)(f) of the Geographical Indications Act (GI Act), the GI “contains the name of a plant variety… and is likely to mislead the consumer as to the true origin of the product.” The GI “does not fall within the meaning of “geographical indication” as defined in Section 2 under Section 41(1)(a) of the GI Act.”

Facts of the case

The Applicant is an Italian-based consortium that was formed and organised under Italian law. The Applicant applied for “Prosecco” to be registered as a geographical indicator for wines (“Application GI”). “Located in the North East region of Italy, and encompasses the whole territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice, and Vicenza” (the “Specified Region”), according to the application.

The representative organisation representing grape farmers and winemakers in Australia is Australian Grape and Wine Incorporated (the “Opponent”). The following are the reasons why the Opponent opposed the registration of Application GI:

(a) The indication “contains the name of a plant variety…and is likely to mislead the consumer as to the true origin of the product,” as defined in Section 41(1)(f) of the Geographical Indications Act (“GIA”) (“Ground 1”); and
(b) The indication “does not fall within the meaning of “geographical indication,” as defined in Section 2,” as defined in Section 41(1)(a) of the GIA (“Ground 2”).

Counter-arguments by the opposition

First, the opposition claimed that “Prosecco” contains the name of a plant variety and thus is likely to mislead consumers as to the true origin of the product because “Prosecco” is the name of a grape variety used to produce wines that could come from Australia, as stated in Section 41(1)(f) of the GIA. As a result, registering “Prosecco” as a geographical indicator for sparkling wines from Italy’s northeast area risks misleading customers into believing that wines manufactured from the Prosecco grape variety can only come from that region, while in fact, such wines may and do come from Australia.
Second, the opponent contended that “Prosecco” does not meet the definition of “geographical indication”, as defined in Section 2 of the GIA as “any indication used in trade to identify goods as originating from a place, provided that, among other things, a given quality, reputation, or other characteristics of the goods is essentially attributable to that place.” The opponent contended that, at the time of registration, the ordinary Singaporean consumer would have considered the word “Prosecco” as a generic name for a sort of sparkling wine manufactured from the Prosecco grape variety, rather than as originating specifically in northeast Italy. Furthermore, the opponent contended that “Prosecco” has no quality, reputation, or other feature that is primarily attributed to northeast Italy, because the attributes of “Prosecco” wine are owing to the underlying grape variety rather than the area.
This implies that, under Section 41(1)(a), it is the merchants’ purpose that is important, and consumer perception of the geographical designation is unimportant. Furthermore, the Registrar alluded to a further (unpleaded) cause of rejection for common names of products under Section 41(1)(e) of the GIA that may have been relevant instead. This ground may have enabled the Opponent to argue that “Prosecco” is a generic name for wine manufactured from “prosecco” grapes.

Possibility of deceiving customers

While the PAR determined that “Prosecco” was the name of a grape variety used to make wines from both Australia and Italy, the PAR determined that registering “Prosecco” as a geographical indication for wines from northeast Italy was not likely to mislead consumers about the true origin of the product. The PAR gave many arguments to support this finding:
1. Despite the fact that Australian “Prosecco” wines were marketed alongside “Prosecco” wines from northeast Italy for at least four years prior to the date of registration, no evidence was submitted to indicate that customers were deceived.

2. Wine consumers are likely to pay a reasonably high level of attention to the place of origin of the wines they consume, as it influences consumer choice.

3. It is standard industry practice in Singapore for wines to be sold with accompanying descriptions of the wine’s place of origin, which is clearly noted on every bottle of wine, decreasing the chance of customers being deceived.

4. The usage of the “Prosecco” grape variety appears to be limited to Australia and Italy, and so is not as broad and ubiquitous as to enhance the possibility of consumer misinformation.

Definition of “geographical indication”

The PAR determined that the definition of a “geographical indicator” in Section 2 of the GIA only needs the indication to be “used in commerce to identify products as coming from a location” and is unconcerned with whether the indication is a generic word for a category of product. As a result, the PAR was convinced that the name “Prosecco” has been used in commerce to designate items as being from northeast Italy.

The PAR rejected the opponent’s argument that “Prosecco” wine from northeast Italy lacks any qualities attributable to the area because the submission was based on a single report made at the opponent’s request and might be prejudiced. Furthermore, because the report’s author(s) did not make an oath as to the validity of the report’s contents, the PAR did not give the report any weight and therefore determined that the opponent had not discharged its burden of evidence on that issue.

What was the decision?

The Principal Assistant Registrar (PAR) in Singapore recently dismissed the Opponent’s challenge to the Applicant’s GI application in a ruling dated May 2021.

Based on the following reasons, the PAR determined that the GI application was unlikely to mislead consumers about the “actual provenance of the product.”

• Since at least 1773, the word “Prosecco” has been used to describe a grape variety. Though it originated in Italy, it has since departed its birthplace and is now grown commercially in nations such as Australia.
• For at least four years, Australian “Prosecco” has been marketed alongside Italian “Prosecco” from the Specified Region in Singapore.
• Prosecco buyers are more inclined to pay “quite high attention” to where the wine is made and the grape variety, among other factors.
• Wines are often promoted and sold in Singapore with accompanying explanations of the wine’s place of origin, with the country of origin prominently marked on every bottle of wine.
• The amount of time that Italian “Prosecco” has been accessible in Singapore, as well as its popularity, repute, and fame, decreases the probability of customers being deceived even more.

Furthermore, it was determined that the Applicant’s GI registration is within the scope of Section 2 of the GI Act since it simply requires the indication to be “used in commerce to identify goods as coming from a location” and is unconcerned with how the indication is perceived by consumers.

Key points

It is evident from this instance that the IPOS will examine the following factors when considering GI applications:

• If the GI is likely to deceive the customer about the product’s real origin
• Whether there is any proof of customers being deceived – while not required, such evidence, if available, would assist an opponent in establishing and strengthening this aspect in the relevant ground of challenge.

Furthermore, despite the fact that “Prosecco” is a grape variety, Section 15(b) of the GI Act does not prevent the registration of GIs that are similar to plant variety names.

As a result, while asking for or opposing a GI, it is critical to be prepared with facts and examine the circumstances of the case at hand in order to create the right arguments for the GI and jurisdiction in the issue.

Conclusion

The current lawsuit is one of Singapore’s first excursions into Geographical Indications legislation. Given the unanswered question of whether Section 41(1)(e) of the GIA could have applied in this case, the general paucity of cases in this area of law, and the growing number of GIs protected and used in Singapore, we anticipate that this area of law will see further and rapid development in the near future.

References

• https://www.ipos.gov.sg/
• https://ipindia.gov.in/rules-2002.htm
• https://indiankanoon.org/doc/173048004/
• https://ipindia.gov.in/writereaddata/images/pdf/gir-fees-22june2011.pdf

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