Prosecco, a white wine traditionally produced in the northern Italy, has been the subject of a recent Geographical Indication (GI) dispute in Singapore. We have written about it sometime ago (see here) and now the situation has changed during the round 2.
The word "Prosecco" used to be universally regarded as a grape variety. However, in 2009, following a decree made under EU law, it has been registered and maintained in the EU as a GI for a type of wine made in the northeast region of Italy. The name for the grape variety used to make Prosecco has been accordingly renamed to 'Glera'.
Followed by this and the bilateral agreements with the EU, in some markets, such as China, Chili, South Africa, Canada, etc., Prosecco has been prevented to be used as a grape variety name.
However, situations are different in some other markets, including Australia and now Singapore, despite that the Italian Consozio Di Tutela Della Denominazione Di Origine Controllata Prosecco (the Consortium) has attempted to have the GI Prosecco registered in those markets in order to be able to take actions against non-Italian Proseccos.
Since the early 2000s, after grapes vines were imported from Italy, Australia started to produce Prosecco. Although the European Commission has tried to register Prosecco as a GI in Australia in 2013, the Winemakers' Federation of Australia has managed to file an opposition on the ground that Prosecco was only the name of a grape variety.
In 2019, the Consortium lodged a GI application for Prosecco in Singapore, but an opposition was made by the Australian Grape and Wine Incorporated based on the below grounds:
- 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; and
- The GI "Prosecco" does not fall within the definition of "geographical indication".
The Opponent claimed that the consumers in Singapore would not recognize "Prosecco" as a product originating only from specific areas of Italy, instead, it is a generic term rather than conditions of certain geographical areas. The quality, reputation or other characteristic of "Prosecco" wines are essentially attributable to the "Glera" grape variety.
Prosecco wines from Australia and Italy. Sourse: https://shopee.sg/
At the first instance ruled in May, 2021, the IP Office of Singapore (IPOS) dismissed the opposition on both grounds and ordered that "Prosecco" could be proceeded to registration as a GI.However, early this year, upon appeal, the Singapore High Court has reversed the decision made by the IPOS and held that the registration of 'Prosecco' as a GI is likely to mislead consumers with regard to the true origin of the products and thus rejected the registration application.
The High Court opined that "Prosecco" had been cultivated and produced in significant or commercial quantities in Australia which is outside of the originating place indicted by the GI. Therefore, consumers are likely to be misled by the GI into thinking that all Prosecco wines are originated from Italy while some of them are actually originated from Australia and therefore the GI is unregistrable.
The case has demonstrated the importance of showing sufficient evidences regarding how consumers might be misled and the actual confusion that could arise amongst consumers.
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