In more detail
In a recent May 2021 decision, Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco v. Australian Grape and Wine Inc., the Principal Assistant Registrar Tan Mei Lin (PAR) rejected Australian Grape and Wine's opposition to Consorzio's geographical indication (GI) application. The GI application was to register the term "Prosecco" as a geographical indication of the North East region of Italy.
The grounds of opposition include:
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the GI contains the name of a plant variety and is likely to mislead the consumer as to the true origin of the product pursuant to section 41(1)(f) of the Geographical Indications Act (GIA); and
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the GI does not fall within the meaning of “geographical indication” as defined in the GIA.
The PAR decided that the GI application was unlikely to mislead consumers on the following basis:
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“Prosecco” has been used as the name of a grape variety since at least 1773, originating from Italy, but since left its cradle of origin and is now cultivated in commercial quantities in other countries such as Australia.
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Australian "Prosecco" and Italian "Prosecco" have been sold alongside each other for 4 years in the Singapore market.
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Prosecco consumers pay a high degree of attention to where goods are produced, reducing the likelihood of them being misled.
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It is common industry practice for wine traders to market their wines in Singapore with an accompanying country of origin.
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Significantly, more Italian "Prosecco" is sold than the Australian variety given the popularity, reputation and length of time Italian "Prosecco" has been sold in Singapore.
Further, the application complies with section 2 of the GIA. The GIA only requires an indication be used in trade to identify goods as originating from a place and is not concerned with how it is perceived by consumers.
For more information, please view the full decision here.
Key takeaways
When processing GI applications, IPOS will consider the likelihood the approved GI will mislead the consumer as to the origin of the goods. Further, even though "Prosecco" is a variety of grapes, section 15(b) of the GIA does not automatically preclude registration of GIs that are identical with names of plant varieties. This decision reinforces the need to consider each GI application on a case-by-case basis to ascertain the prospects of success.
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