SINGAPORE – The Court of Appeal has cleared the way for the term “Prosecco” to be used in Singapore exclusively for wines produced in a specific region in Italy, after it rejected the arguments of an Australian winemakers’ body opposing the move.

Singapore’s highest court last Wednesday allowed an appeal by an Italian trade body to register the term as a geographical indication (GI) in respect of wines in Singapore, overturning an earlier lower court decision in favour of the Australian group.

A five-judge court ruled that while the Australian body could demonstrate that “Prosecco” was the name of a grape variety, it failed to show that the proposed GI is likely to mislead Singapore consumers as to the true geographical origin of the wine.

The High Court had in 2022 concluded that the registration should be refused because it was likely to mislead consumers into thinking that all Prosecco wines originated only from the specified region in Italy, when some could be from Australia.

The result of the ruling by the apex court is that the registration must be allowed to proceed.

It is the first ruling by the Court of Appeal on geographical indications, a type of intellectual property protection which identifies a product as having originated from a particular territory that has given the item its unique characteristics.

The issue raised in the present appeal relates to a specific provision of the Geographical Indications Act. The provision states that a proposed 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 cannot be registered.

In May 2019, an Italian consortium set up to market and protect the use of the term “Prosecco” had applied to register the term as a GI at the Intellectual Property Office of Singapore.

The claimed geographical area for the production of “Prosecco” wines was a specified region in north-east Italy.

In September 2019, the Australian Grape and Wine Incorporated (AGWI), a body for grape growers and winemakers, filed a notice to oppose the registration.

It relied on the provision in question, arguing that “Prosecco” was the name of a grape variety and therefore consumers were likely to be misled about the true origin of the wine.

AGWI’s opposition was dismissed by a principal assistant registrar, who said the likelihood of consumers being misled was small in view of the popularity, reputation and renown of Italian Prosecco wines.

She noted that the Italian wines have been sold in Singapore since 2011, with 387,100 litres sold in 2018 alone, while the Australian wines were introduced into the market here in 2015, with 9,657 litres sold in 2018.

The Australian body appealed to the High Court, which allowed the opposition in 2022 after ruling that the proposed GI objectively contained the name of a grape variety.

The High Court judge reasoned that the proposed GI was likely to mislead consumers if “Prosecco” grapes and “Prosecco” wines had been cultivated or produced in significant quantities outside the specified region in Italy.

The Italian consortium, represented by Mr Anan Sivananthan, then took the case to the Court of Appeal.

In its written judgment, the Court of Appeal ruled that in order for the provision to apply, it must first be shown, based on objective facts, that the proposed GI contains the recognised name of a plant variety or an animal breed.

Evidence of this could come from reputable scientific journals, or legal registers of plant varieties, or from the general usage of the term as denoting a plant variety or an animal breed among a body of consumers or producers, said the court.

In the present case, the Court of Appeal found that AGWI has crossed the threshold of showing that “Prosecco” is, objectively, the name of a plant variety.

The court considered evidence, including a 2007 catalogue of vine nurseries, that “Prosecco” was officially recognised in the European Union as the name of a vine or grape variety, before it was renamed on Aug 1, 2009, to “Glera”.

However, the court said the evidence presented by AGWI did not not establish that Singapore consumers were likely to be misled by the proposed GI. 

The court noted that AGWI chose to rely on advertising materials as well as statistics showing the increase in the volume of Australian “Prosecco” imported into Singapore.

Consumer surveys would have been a more direct way of showing whether the Singapore consumer would have been misled, said the court.

The figures, at best, showed that there is growing demand for Australian “Prosecco”, but did not shed light on whether Singapore consumers might be aware that “Prosecco” is also the name of a grape variety used to make wine of the same name, said the court.