In this decision, the Court of Appeal held that sufficient evidence must be shown to demonstrate that a geographical indication (GI) was likely to deceive the Singaporean buyer as to the source of the product that the GI denotes, so as to render that GI unregistrable. The decision was issued on November 8, 2023.

The appellant was the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Consorzio), an Italian trade body responsible for overseeing and regulating the use of the term “Prosecco” to denote wine produced in the northeastern regions of Italy. The respondent, Australian Grape and Wine Incorporated (AGW) is the representative body of grape and wine producers in Australia.

AGW had challenged the Consorzio’s attempts to register Prosecco (the subject GI) as a GI, first before the Intellectual Property Office of Singapore (IPOS) and then the High Court.

AGW essentially invoked Section 41(1)(f) of the Geographical Indications Act, which prohibits the registration of a GI which contains the name of a plant variety or an animal breed and is likely to mislead the consumer as to the true origin of the product and argued that the Consorzio had identified a “plant variety” and would likely deceive buyers as to the original source of Prosecco wine.

The High Court allowed AGW’s appeal on the basis that the subject GI would likely be deceptive, given that Prosecco wines were also made for sale outside the claimed region, including in Australia. The Consorzio subsequently appealed.

The Court of Appeal held that rendering a GI unregistrable under Section 41(1)(f) requires fulfilling the below two criteria:

1. The subject GI must expressly identify or include a plant variety or animal breed; and
2. If (1) is fulfilled, the subject GI must also be likely to deceive the consumer about the true geographical origin of the product.

On the present facts, the Court of Appeal held that AGW objectively demonstrated criterion (1), but its evidence failed to show that the Singapore consumer would likely be deceived by the subject GI. AGW’s evidence merely showed that more Australian Prosecco wine was being sold in Singapore in conjunction with increasing demand but failed to address the Singapore consumer’s knowledge of Prosecco. The Court of Appeal also opined that Prosecco could be used not just as a registered GI, but also as the name of a grape variety in the course of trade. As such, AGW’s evidence fell short of fulfilling criterion (2).

Given that AGW’s case fell short of fulfilling the criteria to render the subject GI unregistrable, the subject GI proceeded to registration.

This article was first published by the International Trademark Association on inta.org.