Consorzio di Tutela v Australian Grape: Geographical Indications & Consumer Mislead
The Court of Appeal of Singapore heard an appeal by Consorzio di Tutela della Denominazione di Origine Controllata Prosecco ('Consorzio') against Australian Grape and Wine Incorporated ('AGWI') regarding the registration of 'Prosecco' as a Geographical Indication (GI) for wines. AGWI opposed the registration, arguing that it contained the name of a plant variety and was likely to mislead consumers. The High Court allowed AGWI's opposition, but the Court of Appeal allowed the Consorzio's appeal, finding that AGWI failed to prove that Singaporean consumers were likely to be misled. The court set aside the order of the Judge below and allowed the Application GI to proceed to registration.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Singapore Court of Appeal addresses whether 'Prosecco' as a GI misleads consumers about wine origin, considering plant variety names.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Consorzio di Tutela della Denominazione di Origine Controllata Prosecco | Appellant | Association | Appeal Allowed | Won | |
| Australian Grape and Wine Incorporated | Respondent | Association | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Judith Prakash | Justice of the Court of Appeal | Yes |
| Tay Yong Kwang | Justice of the Court of Appeal | No |
| Steven Chong | Justice of the Court of Appeal | No |
| Belinda Ang Saw Ean | Justice of the Court of Appeal | No |
| Woo Bih Li | Judge of the Appellate Division | No |
4. Counsels
4. Facts
- The Consorzio applied to register “Prosecco” as a GI in Singapore for wines from the North East region of Italy.
- AGWI opposed the registration, arguing that “Prosecco” is the name of a plant variety and would mislead consumers.
- The Principal Assistant Registrar dismissed AGWI's opposition.
- The High Court allowed AGWI’s opposition under s 41(1)(f) of the GIA.
- The Consorzio appealed against the Judge’s decision in relation to the ground of opposition under s 41(1)(f) of the GIA.
- The Court of Appeal considered whether the GI contains the name of a plant variety and whether it would mislead consumers.
- AGWI did not produce any evidence of consumer surveys and instead chose to rely on advertising materials as well as statistics showing the increase in the volume of Australian “Prosecco” imported into Singapore.
5. Formal Citations
- Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated, Civil Appeal No 50 of 2022, [2023] SGCA 37
- Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated, , [2021] SGIPOS 9
- Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, , [2022] SGHC 33
6. Timeline
| Date | Event |
|---|---|
| Geographical Indications Act 2014 enacted | |
| Geographical Indications Act 2014 came into force | |
| Consorzio applied to register “Prosecco” as a GI in Singapore | |
| Application GI accepted and published in the Geographical Indications Journal | |
| AGWI filed a notice of opposition against the registration of the Application GI | |
| Geographical Indications (Amendment) Act 2020 entered into force | |
| PAR dismissed AGWI’s opposition | |
| Judge ruled that AGWI’s opposition under s 41(1)(f) of the GIA succeeded but dismissed AGWI’s opposition under s 41(1)(a) of the GIA | |
| Judgment reserved | |
| Judgment delivered |
7. Legal Issues
- Whether the Application GI contains the name of a plant variety
- Outcome: The Court found that AGWI had crossed the threshold of showing that “Prosecco” is, objectively, the name of a plant variety.
- Category: Substantive
- Whether the Application GI is likely to mislead the consumer as to the true origin of the product
- Outcome: The Court found that AGWI failed to establish that the Application GI is likely to mislead the Singapore consumer as to the true geographical origin of “Prosecco”.
- Category: Substantive
8. Remedies Sought
- Registration of Geographical Indication
9. Cause of Actions
- Opposition to registration of Geographical Indication
10. Practice Areas
- Intellectual Property Litigation
11. Industries
- Wine Industry
- Agriculture
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated | Principal Assistant Registrar of Geographical Indications | Yes | [2021] SGIPOS 9 | Singapore | Cited for the Principal Assistant Registrar's decision on the opposition to the registration of the geographical indication. |
| Australian Grape and Wine Inc v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco | High Court | Yes | [2022] SGHC 33 | Singapore | Cited for the High Court's decision on the opposition to the registration of the geographical indication, which was appealed in the present case. |
| Tan Cheng Bock v Attorney-General | Singapore Court of Appeal | Yes | [2017] 2 SLR 850 | Singapore | Cited for the principle that the text of the statute must necessarily be the court’s first port of call when it comes to statutory interpretation. |
| Attorney-General v Ting Choon Meng and another appeal | Singapore Court of Appeal | Yes | [2017] 1 SLR 373 | Singapore | Cited for the principle that the court should consider all the relevant materials surrounding the promulgation of a statute when determining legislative intention. |
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) |
| Geographical Indications Rules 2019 |
| Rule 27 of the Geographical Indications Rules 2019 |
| Rule 27(3) of the Geographical Indications Rules 2019 |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Geographical Indications Act 2014 (No 19 of 2014) | Singapore |
| Section 32(2)(c) of the Geographical Indications Act 2014 | Singapore |
| Section 41(1)(f) of the Geographical Indications Act 2014 | Singapore |
| Section 41(1)(a) of the Geographical Indications Act 2014 | Singapore |
| Section 2(1) of the Geographical Indications Act 2014 | Singapore |
| Section 56 of the Geographical Indications Act 2014 | Singapore |
| Section 4 of the Geographical Indications Act 2014 | Singapore |
| Section 4(2)(c) of the Geographical Indications Act 2014 | Singapore |
| Section 4(2)(d) of the Geographical Indications Act 2014 | Singapore |
| Section 4(6) of the Geographical Indications Act 2014 | Singapore |
| Section 15(b) of the Geographical Indications Act 2014 | Singapore |
| Trade Marks Act 1998 (2020 Rev Ed) | Singapore |
| Section 7 of the Trade Marks Act 1998 (2020 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Geographical Indication
- Prosecco
- Plant Variety
- Consumer Mislead
- True Origin
- Glera
- Singapore Consumer
- Terroir
15.2 Keywords
- Geographical indication
- Prosecco
- Consumer Mislead
- Singapore
- Wine
- Plant variety
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Geographical indications | 95 |
| Intellectual Property Law | 75 |
| Administrative Law | 20 |
16. Subjects
- Geographical Indications
- Intellectual Property
- Consumer Protection
- Wine Law