Protecting Prosecco: A Cause for Cheers for Italian Winemakers

By Georgina Scott

Prosecco, a white wine traditionally hailing from northern Italy, was recently the subject of a Geographical Indication (GI) dispute in Singapore. An application was made to register Prosecco as a GI on 3 May 2019 in Singapore by Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (Applicant). The Applicant is a consortium established under Italian law to coordinate and manage the Denomination of Controlled Origin (“DOC”). DOC is a certification shown on the label of reserved wines from Italy that meet specific production regulations. The GI was to include the territories of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice and Vicenza, located in the North East region of Italy.

However, an objection was made shortly after the lodging of this application by the representative body for grape growers and winemakers in Australia, Australian Grape and Wine Incorporated (Opponent). The objection relied on two grounds under the Geographical Indications Act (No. 19 of 2014):

The said GI contains the name of a plant variety, that being the grape variety “Prosecco”, and this is likely to mislead consumers as to the origin of the product pursuant to Section 41(1)(f) (“first ground”); and
The GI does not fall within the definition of “geographical indication” as defined in Section 2 pursuant to Section 41(1)(a) (“second ground”);

Nevertheless, the Principal Assistant Registrar found the opposition to fail on both grounds.

Although it was accepted that “Prosecco” is the name of a grape variety, it was held that no evidence presented proved that there is a likelihood that consumers will be misled as to the true origin of the product. When deciding this ground, consideration was given to the fact that consumers are likely to pay a high degree of attention when purchasing this good, and the commonplace practice within the industry in Singapore to market wines with information about the country of origin. Moreover, the Principal Assistant Registrar considered the popularity, reputation and renown of Italian “Prosecco” in Singapore as further reducing the likelihood of confusion amongst consumers. Further cementing this point is the fact that Italian “Prosecco” has been available in Singapore since 2010, achieving a production score of more than 460 million bottles in 2018. In contrast, Australian “Prosecco” has only been available in Singapore since 2015, with the quantities sold significantly lower than their Italian counterpart.

The second ground was also not made out given “Prosecco” was found to be captured by Section 2 of the GI Act. Notably, the Opponent in this case did not present enough compelling evidence to discharge their burden of proof. The one piece of evidence that was brought forward by the Opponent was prepared on the request of the Opponent and therefore, the Intellectual Property Office of Singapore (IPOS) found that it “could be biased”. IPOS allowed this GI Application to proceed towards registration and the Opponent was to bear the cost of the opposition.

Key takeaways

Beyond being an interesting read, this case presents a few key learnings. Firstly, where possible, it would be beneficial to present evidence showing how exactly consumers may be misled. Evidence of actual confusion in consumers would have been a strong point in favour of the opposition. Secondly, the Opponent did not plead a very important provision relevant to this case, that being Section 41(1)(e) of the GI Act that has a ground of refusal for generic terms, i.e., a GI that is identical to the common name of any goods in Singapore shall not be registered as a GI. Lastly, section 15(b) should not be overlooked given the Act does not prohibit the registration of GIs that are identical to the names of plant varieties.

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KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.