Introduction
Geographical Indications (GIs) are indications used to identify products which originate from a particular territory which gives the relevant products their special quality or reputation. Singapore has a legislative framework for the protection of GIs under the Geographical Indications Act 2014 (GIA) and has started accepted GIs for registration since the launch of the Singapore Geographical Indications Register in 2019. As part of the registration procedure, third parties can oppose the registration of a GI application upon its publication. The recent case of Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37 (Consorzio v AGWI) arose from an opposition under the GIA and marks the first time that the Singapore Court of Appeal (SGCA) had to consider the operation and interpretation of various provisions under the GIA.
Background
Consorzio di Tutela della Denominazione di Origine Controlla Prosecco (Consorzio) is a trade body in Italy that is responsible for protecting, promoting, marketing and generally overseeing the use of the term "Prosecco". Consorzio sought to register the name "Prosecco" as a GI in respect of wines from the North East region of Italy (Application GI). This application was opposed by the Australian Grape and Wine Incorporated (AGWI), the representative body for grape growers and wine makers in Australia, on the grounds that the Application GI did not meet the definition of a "geographical indication" (s41(1)(a) GIA) and that it contained the name of a plant variety and was likely to mislead consumers as to the true origin of the product (s41(1)(f) GIA).
At first instance, AGWI's opposition was dismissed by the Principal Assistant Registrar of GIs (PAR). AGWI appealed the PAR's decision at the General Division of the High Court (SGHC), and the SGHC allowed the appeal on the basis of s41(1)(f) GIA. The SGHC took into account the evidence provided by AGWI that Prosecco wines were being produced in commercial quantities in countries such as Australia, and was of the view that the Application GI would likely mislead consumers if Prosecco grapes and Prosecco wines are being cultivated and produced in significant quantities outside the region claimed under the Application GI.
Consorzio appealed to the SGCA against the SGHC's decision in relation to the ground of opposition under s41(1)(f) GIA.
SGCA Decision
Under Section 41(1)(f) GIA, a GI should not be registered if the following two requirements are met:
- The Application GI contained the name of a plant variety; and
- The Application GI was likely to mislead the consumer as to the true origin of the product.
The issue was how the inquiry should be carried out.
1st requirement: Should the Court take an objective assessment to determine whether the Application GI contained the name of a plant variety?
The SGCA agreed with the SGHC that the fulfilment of this requirement is to be assessed objectively. The Court clarified that the threshold for this determination is not high – as long as the name in question is recognised as the name of a plant variety or an animal breed by "a not insignificant population of people". Evidence from reputable sources such as scientific journals, legal registers of plant varieties or from the general usage of the term as denoting a plant variety or an animal breed, can be considered. The perspectives of the Singapore consumer should not be taken into account in this assessment.
In this case, "Prosecco" was recognised as the name of a grape variety before it was legally renamed as "Glera" in 2009 in Europe. The SGCA found that this first requirement was met notwithstanding the name change.
2nd requirement: Whether the Application GI is likely to mislead consumers into thinking that "Prosecco" wine could only originate from the region claimed when in fact, their true origin could be other geographical locations where the "Prosecco" grape variety is used to make wine.
The SGCA emphasised that the crux of this inquiry is the awareness and general knowledge of the average Singapore consumer. Factors include:
- Whether the average consumer in Singapore is aware that the name in question is the name of a plant variety. If the consumer does not have such a perception or belief, then it is unlikely any operative deception would arise.
- Whether the consumer is aware that the plant variety is involved in the production of the product in question.
- Whether the GI contains other words in addition to the name of the plant variety.
In ruling in favour of Consorzio, the SGCA made it clear that the Opponent had the burden of proof to establish that the ground of opposition it relied on was made out. In its evaluation of the evidence, the SGCA noted that AGWI did not produce any evidence of consumer surveys and chose to rely solely on advertising materials and statistics showing increase in volume of Australian "Prosecco" imported into Singapore. The SGCA emphasised that to fulfil the 2nd requirement, adducing evidence which demonstrates that the consumer is likely to be misled is crucial. The SGCA highlighted that:
- Consumers surveys would have been a more direct way of demonstrating whether the consumer is likely to be misled by the Application GI. It cautioned that it would also be important to place before the Court evidence of how such surveys were conducted so as to ensure that the surveys were not skewed to reach a desirable result in favour of that party.
- Evidence such as advertising materials and statistics showing the import volume of Australian "Prosecco" wine did not shed light on the material inquiry of whether the Singapore public has any knowledge of the name of the grape variety used to produce the Australian "Prosecco" wine.
Thus, the conclusion reached by the SCGA was that AGWI had failed to establish that the Application GI is likely to mislead the Singapore consumer as to the true geographical origin of "Prosecco".
Conclusion
The SCGA had pointed out in its judgment that although there is a close relationship between a GI and a trade mark, it cannot be assumed that principles developed in trade mark law can be wholly imported into the law governing GIs. The Court also cautioned that there are differences between the regimes for protection of GI in the European Union and Singapore. The development of Singapore jurisprudence in the area of GI in Singapore through this recent case of Consorzio v AGWI is thus welcomed as it provides useful guidance on how the GIA is likely to be interpreted by the Singapore courts.
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