Australian Grape and Wine v Consorzio Prosecco: Geographical Indication Dispute over 'Prosecco' Wine

Australian Grape and Wine Incorporated (AGWI) appealed against the Principal Assistant Registrar's decision to allow the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco's (the Consorzio) application to register 'Prosecco' as a geographical indication (GI) for wines from a specified region in Northern Italy. The High Court allowed AGWI's appeal, finding that the GI was likely to mislead consumers as the 'Prosecco' grape variety is cultivated outside the specified region. The court dismissed AGWI's other ground of appeal.

1. Case Overview

1.1 Court

General Division of the High Court of the Republic of Singapore

1.2 Outcome

Appeal Allowed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Singapore court allows appeal against registration of 'Prosecco' as a geographical indication, finding it misleading due to grape variety cultivation outside Italy.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Consorzio di Tutela della Denominazione di Origine Controllata ProseccoRespondentAssociationAppeal DismissedLost
Australian Grape and Wine IncorporatedAppellantAssociationAppeal allowed in partPartial

3. Judges

Judge NameTitleDelivered Judgment
Valerie TheanJudge of the High CourtYes

4. Counsels

Counsel NameOrganization
Sivagnanaratnam SivananthanBird & Bird ATMD LLP
Loy Ming Chuen BrendanBird & Bird ATMD LLP
Ng Sui Ping Penelope AnnBird & Bird ATMD LLP
Chan WenqiangRavindran Associates LLP
Ravindran s/o MuthucumarasamyRavindran Associates LLP
Brandon Lim Sheng YuanRavindran Associates LLP

4. Facts

  1. Consorzio applied to register “Prosecco” as a GI in respect of wines originating from a specified region in Northern Italy.
  2. AGWI filed a notice of opposition against the registration of the Application GI.
  3. AGWI argued that the Application GI did not fall within the meaning of “geographical indication” as defined in section 2(1) of the GIA.
  4. AGWI argued 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.
  5. The Principal Assistant Registrar dismissed AGWI’s opposition.
  6. AGWI appealed the Principal Assistant Registrar's decision.
  7. Australian “Prosecco” wines have been available in Singapore, albeit in smaller quantities, since at least 2015.

5. Formal Citations

  1. Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, Tribunal Appeal No 19 of 2021, [2022] SGHC 33

6. Timeline

DateEvent
Consorzio applied to register “Prosecco” as a GI in Singapore
Application GI was accepted and published in the Geographical Indications Journal
AGWI filed a notice of opposition against the registration of the Application GI
The Principal Assistant Registrar dismissed AGWI’s opposition
PAR’s Full Grounds of Decision were issued
AGWI applied for the PAR’s decision disallowing its opposition to the Application GI to be reversed
AGWI’s appeal was allowed
Grounds of Decision issued

7. Legal Issues

  1. Grounds for refusal of registration of geographical indication
    • Outcome: The court held that the Application GI was likely to mislead consumers into thinking that all “Prosecco” wines originated from the Specified Region in Italy, when in fact some “Prosecco” wines originated from Australia.
    • Category: Substantive
    • Sub-Issues:
      • Likelihood to mislead consumers as to the true origin of the product
      • Whether the geographical indication contains the name of a plant variety
  2. Definition of geographical indication
    • Outcome: The court held that the Application GI fell within the meaning of “geographical indication” under s 2(1) of the GIA.
    • Category: Substantive
    • Sub-Issues:
      • Whether the indication is used in trade to identify goods as originating from a place
      • Whether a given quality, reputation or other characteristic of the goods is essentially attributable to that place

8. Remedies Sought

  1. Reversal of the Principal Assistant Registrar’s decision

9. Cause of Actions

  • Opposition to registration of geographical indication

10. Practice Areas

  • Intellectual Property Litigation

11. Industries

  • Food and Beverage
  • Wine Industry

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Tan Cheng Bock v Attorney-GeneralHigh CourtYes[2017] 2 SLR 850SingaporeCited for the principle that a statutory provision ought to be given its plain and ordinary meaning.
The Tea Board v European Union Intellectual Property Office (EUIPO) (Delta Lingerie intervening)European Court of JusticeYes[2018] Bus LR 1095European UnionCited to define the essential function of a GI as guaranteeing the geographical origin of goods and their specific qualities.

13. Applicable Rules

Rule Name
Order 55 of the Rules of Court (2014 Rev Ed)
Rule 7 of the Supreme Court of Judicature (Geographical Indications) Rules 2019 (S 706/2019)

14. Applicable Statutes

Statute NameJurisdiction
Geographical Indications Act 2014Singapore
Section 32(2)(c) of the Geographical Indications Act 2014Singapore
Section 41(1)(a) of the Geographical Indications Act 2014Singapore
Section 41(1)(f) of the Geographical Indications Act 2014Singapore
Section 2(1) of the Geographical Indications Act 2014Singapore
Section 4 of the Geographical Indications ActSingapore
Section 15(b) of the Geographical Indications ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Geographical indication
  • Prosecco
  • Grape variety
  • Mislead consumer
  • True origin
  • Plant variety
  • Wine
  • Specified region
  • Trade
  • Qualities
  • Reputation
  • Characteristics

15.2 Keywords

  • Geographical indication
  • Prosecco
  • Wine
  • Singapore
  • Intellectual property
  • Registration
  • Grape variety

17. Areas of Law

Area NameRelevance Score
Geographical indications95
Intellectual Property Law90
Wine Law70
International Trade30
International Agreements25
Qualification of rights20
Contract Law10
Administrative Law10

16. Subjects

  • Intellectual Property
  • Geographical Indications
  • Wine Law