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
Court of Appeal of Singapore [2023]: Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated, Case No. SGCA 37
Date of judgment: November 8, 2023
Issuing authority: Court of Appeal of Singapore
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Geographical Indications
Appellant: Consorzio di Tutela della Denominazione di Origine Controllata Prosecco
Respondent: Australian Grape and Wine Incorporated
Keywords: Geographical indications, Grounds of refusal of registration, Opposition to registration
Basic facts: The appellant applied to register “Prosecco” as a GI in respect of wines (the “Application GI”) under the Geographical Indications Act 2014 (“GIA”). The claimed geographical area for the production of “Prosecco” wines was “the North East region of Italy” (the “Specified Region”). Thereafter, the respondent filed a notice of opposition against the registration of the Application GI. One of the two grounds it relied on was s 41(1)(f) of the GIA, that the Application GI contained the name of a plant variety and was likely to mislead the consumer as to the true origin of the product.
The Principal Assistant Registrar (“PAR”) found in favor of the appellant and dismissed the opposition – i.e., the likelihood of consumers being misled was small and therefore the Application GI should be accorded protection under the GIA. The respondent appealed against the PAR’s decision.
The High Court ruled that the respondent’s opposition under s 41(1)(f) of the GIA succeeded: Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco [2022] SGHC 33 (the “GD”). The Application GI did, objectively, contain the name of a plant variety, ie, the Prosecco grape. As “Prosecco” grapes had been cultivated and “Prosecco” wines produced in significant quantities in Australia, outside the Specified Region, the Application GI would be likely to mislead the consumer. The appellant appealed against the High Court’s decision.
Held: Because the appellant failed to establish that the Application GI is likely to mislead the Singapore consumer as to the true geographical origin of “Prosecco”, the Court of Appeal allowed the appeal and held that the Application GI should be allowed to proceed to registration.
Relevant holdings in relation to emerging issues in geographical indications: In order for s 41(1)(f) of the GIA to apply, it must be shown that the name of the GI sought to be registered indeed contains the name of a plant variety or an animal breed. This is to be established on an objective basis, and it is sufficient to show that the name in question is indeed recognized 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 applying s 41(1)(f) of the GIA, the key inquiry is whether the Singapore consumer is likely to be misled, by the GI sought to be registered, as to the true geographical origin of the goods. Three factors should be taken into account in considering whether a GI is likely to mislead the Singapore consumer. First, whether the average consumer in Singapore is even aware that the name in question is indeed the name of a plant variety. 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 GI protection is sought. Third, whether the GI sought to be registered is identical with the name of the plant variety or animal breed.
The party opposing the registration of the Application GI bears the legal burden of proof of establishing that the ground of opposition under s 41(1)(f) of the GIA has been made out.
In this case, that party was the respondent. It thus had to demonstrate that s 41(1)(f) of the GIA applied because the Application GI contained the name of a plant variety, and that the Singapore consumer was likely to be misled by the Application GI. While the respondent was able to demonstrate that the Application GI contained the name of a plant variety, it was unable to show that the Singapore consumer was likely to be misled by the Application GI. The evidence adduced by respondent, which was limited to marketing materials and statistics showing the increase in import volumes of Australian “Prosecco” in Singapore, did not establish that the Singapore consumer was likely to be misled by the Application GI at the time the application was made.
Relevant legislation:
Geographical Indications Act 2014 (Act 19 of 2014)