Singapore Court of Appeal allows registration of “Prosecco” as geographical indication

17 November 2023

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 allowed the registration of “Prosecco” as a geographical indication under the Geographical Indications Act 2014 (“GIA”).

This decision is the first time the Court of Appeal has considered the operation and interpretation of sections in the GIA. The issue specifically raised in this decision concerned the operation of section 41(1)(f) of the GIA which provides that a geographical indication, which contains the name of a plant variety or an animal breed, and is likely to mislead the consumer as to the true origin of the product, shall not be registered as a geographical indication.

Background

The respondent, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“Consorzio”), had applied to register “Prosecco” as a geographical indication in respect of wines originating from the northeast region of Italy. The appellant, Australian Grape and Wine Incorporated (“AGWI”), filed an opposition against the registration.

At first instance, the Principal Assistant Registrar (“PAR”) decided that “Prosecco” may proceed to registration as a geographical indication. Following AGWI’s appeal, the General Division of the Singapore High Court reversed the PAR’s decision and refused the registration (“High Court decision”). The Consorzio appealed against the High Court decision.

For a detailed summary of the High Court decision (and that of the PAR), please refer to our previous Alert titled “Singapore High Court refuses registration of “Prosecco” as a geographical indication”.

Decision of the Court of Appeal

As with the proceedings below, the main issues raised in the appeal related to the interpretation of section 41(1)(f) of the GIA which provides as follows:

41(1) The following shall not be registered:

…

(f)        a geographical indication which contains the name of a plant variety or an animal breed and is likely to mislead the consumer as to the true origin of the product.

The Court of Appeal, in agreement with the High Court decision, held that there were two conjunctive requirements in the application of section 41(1)(f) of the GIA. First, that the geographical indication in question contained the name of a plant variety, and secondly, that the geographical indication was likely to mislead the consumer as to the true geographical origin, not the true plant origin, of the product.

Whether “Prosecco” contains the name of a plant variety

The Court of Appeal agreed with the High Court and held that the fulfilment of the requirement that a geographical indication contains the name of a plant variety is to be assessed objectively, and not from the subjective perspective of consumers in Singapore.

Notably, the Court of Appeal held that this first requirement is not a high threshold to be crossed. All that would need to be shown is that the name in question is indeed recognised as the name of a plant variety or an animal breed by a not insignificant population of people. Evidence of this could come from sources such as reputable scientific journals, or legal registers of plant varieties, or from the general usage of the term as denoting a plant variety or an animal breed among a body of consumers or producers.

In cases where the name of the plant variety or animal breed has been changed by some or most of its users, the Court of Appeal was of the view that, if the evidence shows that the old name holds sway in Singapore, the geographical indication containing the old name would objectively be considered a geographical indication containing the name of a plant variety or animal breed, notwithstanding the change in name by any particular country or producer.

On the evidence, the Court of Appeal held that AGWI had crossed the threshold of showing that “Prosecco” was objectively the name of a grape variety, notwithstanding that the grape variety is now called “Glera” in Europe.

Whether “Prosecco” was likely to mislead the consumer as to the true geographical origin of the product

In evaluating whether “Prosecco” was likely to mislead the consumer as to the true geographical origin of the product, the Court of Appeal listed three factors for consideration:

• First, whether the average consumer in Singapore is aware that the name in question is indeed the name of a plant variety or an animal breed. If the consumer does not even perceive or believe the name in question to be that of a plant variety or an animal breed, then it is unlikely that any operative deception would arise.
• Second, whether the Singapore consumer is aware that the plant variety or animal breed in question is involved in the production of the product over which protection as a geographical indication is sought. If the consumer does not associate the plant variety or animal breed with the product in question, then it is unlikely that he will be misled as to the true geographical origin of the product.
• Third, a geographical indication that is identical with the name of the plant variety or animal breed would convey a very different message to the Singapore consumer as opposed to a geographical indication that contains other words in addition to the name of the plant variety or animal breed.

The Court of Appeal noted that these three factors are not a closed list, and merely serve as guidance to the issues that the court would consider in determining whether the Singapore consumer is likely to be misled.

Court of Appeal’s consideration of the evidence relating to second requirement

The Court of Appeal evaluated the same evidence that was before the High Court and held that the evidence adduced by AGWI did not establish that the Singapore consumer was likely to be misled by “Prosecco”.

In assessing AGWI’s advertising materials relating to “Prosecco” wines from Australia, the Court of Appeal was of the view that without any evidence which demonstrated the extent of user engagement with such advertising material, it was impossible to infer the knowledge which the Singapore consumer would have had of the name of the grape variety used to produce “Prosecco” wines.

With regard to AGWI’s evidence consisting of statistics showing the increase in the volume of Australian “Prosecco” imported into Singapore, the Court of Appeal held that such evidence did not shed light on whether consumers would be misled by the registration of “Prosecco”. As such, the Court of Appeal disagreed with the High Court’s finding that “Prosecco” wines being produced in significant or commercial quantities outside the region specified in the geographical indication would cross the threshold for “Prosecco” to be likely to mislead.

The Court of Appeal was of the view that consumer surveys would have been a more direct way of demonstrating whether the Singapore consumer would have been misled, although the Court of Appeal also stated that such consumer surveys were not in and of themselves determinative.

Finding that AGWI had failed to establish that the registration of “Prosecco” as a geographical indication was likely to mislead the Singapore consumer as to the true geographical origin of “Prosecco”, the Court of Appeal allowed the application for registration to proceed.

Impact of the decision

The Court of Appeal’s decision has decisively concluded how both limbs of section 41(1)(f) of the GIA are to be interpreted by the courts in future applications under the GIA. The Court of Appeal also demonstrated how the evidence should be assessed and its decision has made clear that advertising materials and sales numbers of goods originating from another region would not show that the Singapore consumer would have been misled by the geographical indication in question.

Notably, while the Court of Appeal stated that consumer surveys would be a more direct way of proving that the Singapore consumer had been misled, the Court of Appeal cautioned that, when adducing evidence of consumer surveys, parties should also place before the court evidence of how such surveys are conducted.

The decision is also instructive for the Court of Appeal’s views on two points of principle relating to the GIA. First, the Court of Appeal stated that geographical indications and trade marks are distinct species of intellectual property and have very different historical origins. Given these differences, the Court of Appeal would be slow to import principles of trade mark law into the law of geographical indications and in the interpretation of the GIA. Secondly, the Court of Appeal rejected the argument that EU principles on geographical indications could inform the interpretation of section 41(1)(f) of the GIA. The court explained that the Singapore model of geographical indication protection had marked differences from the EU model. This aspect of the decision shows the Court of Appeal’s views on applying EU principles to interpret the GIA in future matters.

Reference materials

The judgment is available on the Singapore Courts website www.judiciary.gov.sg.