CONSORZIO DI TUTELA DELLA DENOMINAZIONE DI ORIGINE CONTROLLATA PROSECCO v AUSTRALIAN GRAPE AND WINE INCORPORATED

Facts

The appellant, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Consorzio), is an Italian trade body that oversees use of the term "Prosecco". On 3 May 2019 it applied to register "Prosecco" as a geographical indication (GI) for wines from a north-eastern region of Italy covering Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice and Vicenza. The respondent, Australian Grape and Wine Incorporated (AGWI), which represents Australian grape growers and winemakers, opposed registration on two grounds under the Geographical Indications Act 2014 (GIA): that the GI contained the name of a plant variety and was likely to mislead consumers as to the true origin of the product (s 41(1)(f)), and that it was not a GI within the statutory definition (s 41(1)(a)).

The Principal Assistant Registrar dismissed both grounds. On appeal, a High Court judge upheld the s 41(1)(f) ground, holding that "Prosecco" was objectively the name of a grape variety and that production of Prosecco wine in commercial quantities elsewhere, such as Australia, made the GI likely to mislead. The s 41(1)(a) ground failed and was not appealed. The Consorzio appealed to the Court of Appeal in Civil Appeal No 50 of 2022, the first time that court considered the GIA. An independent counsel assisted the court.

Issues

1. Whether, under s 41(1)(f) of the GIA, the question if a GI contains the name of a plant variety is assessed objectively or from the Singapore consumer's perspective.
2. How the court decides whether such a GI is likely to mislead the Singapore consumer as to the true origin of the product.
3. Whether AGWI proved that the "Prosecco" GI was likely to mislead the Singapore consumer.

Holding

The Court of Appeal allowed the appeal and set aside the High Court's order, so the "Prosecco" GI must be allowed to proceed to registration. AGWI was ordered to pay the Consorzio costs of $120,000, inclusive of disbursements, for the appeal and the hearings before the judge and the Principal Assistant Registrar.

Reasoning

On the first element, the court agreed with the judge that whether a GI contains the name of a plant variety or animal breed is an objective threshold question, not one of consumer belief. It declined to rely on European Union law, which regulates wine names differently, or on trade mark principles, since GIs and trade marks are distinct kinds of property. The GIA, read with the EU-Singapore free trade agreement and s 15(b), lets such names be registered as GIs while keeping their trade use free, leaving the likelihood of confusion as the gatekeeper. The threshold is low: the name must be recognised as a plant variety or breed by a not insignificant population. Here the official EU recognition of "Prosecco" as a grape variety before its renaming as "Glera" on 1 August 2009, and a vine nursery catalogue, met that test.

On the second element, "true origin" means true geographical origin. The question is whether the Singapore consumer, meaning citizens and residents rather than people passing through, is likely to think the product can only come from the specified region when it could come from elsewhere. That depends on what the average consumer knows. The court gave three non-exhaustive factors: whether the consumer knows the name is a plant variety or breed, whether the consumer links that variety to the product, and whether the GI is identical to the name or contains other words.

On the facts, the opponent bore the burden of proof and failed. AGWI produced no consumer surveys. The court disagreed with the judge that import figures for Australian Prosecco were enough, since they showed only rising demand, not consumer awareness. Much of AGWI's own advertising evidence described the grape as "Glera", and there was no evidence of how far consumers engaged with listings naming the grape "Prosecco". AGWI had therefore not shown the GI was likely to mislead.

From the judgment