Prosecco: a plant variety or geographical indication? Singapore Court says "both"!

Tensions have once again bubbled up to the surface in the dispute between Australia and the European Union about protection of the sparkling wine, 'Prosecco', as a geographical indication. This time, the competing views were laid bare in the recent judgment of the Singapore Court of Appeal in Consorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37. The case concerned the registration of 'Prosecco' as a GI in Singapore.

The Law on GIs in Singapore

Prosecco as a plant variety? This Kat was interested
to see a court finally address this argument

Singapore has offered protection for GIs since 1999, but it only adopted a registration-based system in the last decade with the Geographical Indications Act 2014 ('GIA'). The GIA was introduced to comply with the obligations of the EU-Singapore Free Trade Agreement, which required Singapore to strengthen its GI protections and introduce national registration.

The GIA entered into force in April 2019. A month later, the Consorzio di Tutela della Denominazione di Origine Controllata Prosecco ('Consorzio') filed an application to register the name 'Prosecco' in respect of wines. The resistance from Australian producers towards GI protection for products like Prosecco has been a major factor in the stalled negotiations of the EU-Australia free trade agreement, so it was unsurprising when a notice of opposition was filed by the representative body, Australian Grape and Wine Incorporated ('AGWI').

Is Prosecco a plant variety name?

The key argument made in opposition was that the registration should be refused on the grounds that it "contains the name of a plant variety ... and is likely to mislead the consumer as to the true origin of the product" (see section 41(1)(f) GIA). 

Plant varieties are identified by names, which should be written clearly and in single quotation marks on product labels. Readers with green thumbs would be familiar with these names from purchasing seeds or potted plants for their gardens, but the general public are more likely to know these names from choosing between varieties of apples like 'Granny Smith', 'Honeycrisp' or 'Fuji' at the grocery store.

AGWI pointed to evidence dating back to the 18th century that 'Prosecco' was recognised as the name of a grape variety, and was described as such by wine industries, consumers, and exporters internationally. 'Prosecco' had also been referred to as a grape variety in a treaty between the European Union and Australia. Furthermore, it was only after Italy claimed 'Prosecco' as a protected designation of origin that the EU declared the 'Prosecco' grape variety would be renamed as 'Glera' in 2009.

Whilst not raised in the Court of Appeal, in the earlier proceedings, AGWI had sought to bolster its argument with research by academics at Monash University. Their work was published in a 2019 article and then expanded in a report for AGWI in 2022. However, the Registrar's decision and the High Court judgment declined to attach much weight to the Monash research. For one thing, the evidence was from legal academics, rather than specific factual evidence by wine experts. The Registrar also raised concerns about bias, since the research was conducted on a pro bono basis at the request of AGWI.

The Registrar, the High Court, and the Court of Appeal all took an objective approach to the question (by looking at evidence such as the variety names listed in nursery catalogues), and declined to adopt the subjective approach advocated by the Consorzio (which would focus on the perspective and knowledge of the Singapore consumer). On that basis, it was held that 'Prosecco' was still the name of a grape variety and the change to 'Glera' only applied in the EU. 

Is Prosecco a misleading name?

The above finding was not enough for AGWI to succeed: section 41(1)(f) GIA also requires that the GI be "likely to mislead the consumer as to the true origin of the product". The Court of Appeal took the view that "it is the confusion requirement that serves as gatekeeper when it comes to the registration of GIs that contain the name of plant varieties". 

After their initial failure before the Registrar, AGWI found success in the High Court by drawing on EU law and commentary. The Court of Appeal, however, looked to other scholarship and had the benefit of the expertise of Professor Ng-Loy Wee Loon (National University of Singapore), who was appointed as Independent Counsel. This informed the Court of Appeal's view that there were marked differences between the EU and Singapore models of GI protection, which made the principles from EU law unhelpful on this point. The Court of Appeal nevertheless adopted the same framing as the High Court, asking:

whether the Application GI is likely to mislead consumers into thinking that “Prosecco” wine could only originate from the Specified Region when, in fact, their true origin could be other geographical locations where the “Prosecco” grape variety is used to make wine.

The Court of Appeal went on to outline three factors, which shift the focus to the awareness of the Singapore consumer when assessing whether a GI would be misleading (but emphasised that this is not a closed list): 

1. Whether the average consumer in Singapore is even aware that the name in question is indeed the name of a plant variety;
2. Whether the Singapore consumer is aware that the plant variety is involved in the production of the product in question;
3. Whether the GI is identical with the name of the plant variety (as opposed to a GI that contains additional words, such as 'Conegliano Prosecco').

Prosecco from Northern Italy had been in the Singapore market since about 2011. AGWI submitted evidence that more than 25 brands of Prosecco had been exported from Australia to Singapore since 2015, albeit in much smaller quantities than from Italy. However, the statistics and advertising materials did not address the perspective of the Singapore consumer, and some of the materials even used 'Glera' as the name of the grape variety. The Court of Appeal stated that consumer surveys would have provided more direct evidence, but none were provided. Therefore, it was "impossible to infer the sort of knowledge which the Singapore consumer would have had of the name of the grape variety used to produce the wine “Prosecco”."

Since AGWI failed to provide the sufficient evidence to establish the second limb, the Consorzio was ultimately successful and 'Prosecco' will proceed to registration as a GI in Singapore. 

Comment

This was the first decision from the Court of Appeal on the interpretation of the GIA. As the apex court, the Court's judgment is the final word on the 'Prosecco' matter in Singapore. However, with ongoing trade negotiations, one thing is for sure: this isn't the last we will hear from Australia about the use of the name 'Prosecco'.