Consorzio di Tutela della Denominazone di Origine Controllata Prosecco v Australian Grape and Wine Incorporated 

The Interpretation of section 41(1)(f) of the Geographical Indications Act:
Consorzio di Tutela della Denominazone di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] 2 SLR 509; [2023] SGCA 37

I. Executive Summary.

Geographical Indications (“GI”) identify and connect the food with the landscape of the particular region that produced the food. This connection between the GI and the landscape in question means that GIs offer accurate information to a consumer about the geographical origins of the food in question. For instance, champagne refers to sparkling wines exclusively produced in the Champagne region of France.

This issue of whether a GI in respect of “Prosecco” could be registered in Singapore was considered by the Court of Appeal (the “CA”) in the landmark case of Consorzio di Tutela della Denominazone di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37 (“Consorzio (CA)”). The dispute concerned the application to register “Prosecco” as a GI in respect of wines in Singapore (“the Application GI”), made by Consorzio di Tutella della Denominazione di Origine Controllata Prosecco (the “Consorzio”). The Consorzio is an Italian trade body responsible for protecting and overseeing the use of the term “Prosecco”. Consorzio’s application was opposed by Australian Grape and Wine Incorporated (“AGWI”), a body which represents Australian grape growers and winemakers. AGWI’s notice of opposition claimed that the Application GI contained the name of a plant variety and was likely to mislead a consumer as to the true origin of Prosecco wines.

To succeed in opposing the registration of a GI under section 41(1)(f) of the Geographical Indications Act 2014 (Act 19 of 2014) (“GIA”),⁽¹⁾ AGWI needed to prove two points:

• First, that the GI sought to be registered contains the name of a plant variety or animal breed. This is a low threshold, objective test which can be satisfied by evidence from legal registers or reputable scientific journals.
• Second, that the Singaporean consumer is misled as to the true geographical origin of the product, rather than the true plant origin of the product.

Following the decisions before the Principal Assistant Registrar of Geographical Indications (the “PAR”) and the General Division of the High Court (“HC”), the matter was heard before a five-judge panel of the CA, which allowed the Consorzio’s GI application for their “Prosecco” wines.

One key issue for the CA to decide was whether AGWI had successfully established the ground of opposition under section 41(1)(f) of the GIA. The CA held that while AGWI did show that the GI contained the name of a plant variety, it was unable to show that the Singapore consumer was likely to be misled by the GI. In particular, the marketing material and statistics which showed the increase in import volumes of Australian “Prosecco” in Singapore did not suffice to show that the Singapore consumer was likely to be misled by the GI.

The CA held that the evidence that AGWI relied on (namely advertisements and consumption statistics) was insufficient to prove that the Singaporean consumer was misled as to true geographical origin of “Prosecco” wines.

II. Material Facts.

The Consorzio applied to register “Prosecco” as a GI in respect of wines sold in Singapore (the “Application GI”), originating from the North East region of Italy (the “Specified Region”). AGWI filed a notice of opposition against the registration of the Application GI on two grounds. AGWI’s arguments were dismissed by the PAR.

On the first ground, AGWI contended that section 41(1)(f) of the GIA was made out as the Application GI contained the name of a plant variety and was likely to mislead the consumer as to the true origin of the product. However, the PAR took the view that AGWI had submitted no evidence to prove that the Singaporean consumer was likely to be misled. Further, the PAR noted that the Italian “Prosecco” wine had been sold locally for eight years and at a high volume, indicating that the likelihood of consumers being misled was low. On the second ground, AGWI contended that section 41(1)(a) of the GIA⁽²⁾ was made out as the Application GI was not a “geographical indication” as defined under section 2(1) of the GIA and was thus unregistrable. However, the PAR also found that AGWI failed to prove this ground, noting that the AGWI relied solely on a report that was prepared at the behest of AGWI. Further, the report writers did not make the appropriate statutory declarations that subjected them to possible consequences if the report was found to contain falsehoods.

AGWI appealed the PAR’s decision at the HC. On the first ground, the HC ruled that AGWI’s opposition under section 41(1)(f) of the GIA succeeded. The HC was satisfied that the Application GI objectively contained the name of a plant variety i.e., the Prosecco grape, and that since “Prosecco” wines were being produced in commercial quantities in countries outside the Specified Region, such as Australia, the Application GI was likely to mislead the Singaporean consumer. On the second ground, however, the HC dismissed AGWI’s opposition. The HC accepted the Consorzio’s evidence that the relevant characteristics of “Prosecco” wine were essentially attributable to the Specified Region. Given that AGWI was unable to adduce expert factual evidence to disprove the Consorzio’s claim, their opposition failed.

The Consorzio then lodged an appeal to the CA against the HC’s decision in respect of the HC allowing the section 41(1)(f) ground of opposition.

III. Issues on Appeal.

The CA addressed the following issues on appeal:

1. What is the proper approach to be taken under section 41(1)(f) of the GIA?
2. Applying this approach, does AGWI’s ground of opposition under section 41(1)(f) of the GIA succeed?

A. What is the proper approach to be taken under section 41(1)(f) of the GIA?

The CA held that to establish an opposition under section 41(1)(f) of the GIA, AGWI must show that section 41(1)(f) of the GIA satisfied the following two requirements: first, that the Application GI contained the name of a plant variety; and second, that the Application GI was likely to mislead the consumer as to the true origin of the product.

(1) The first requirement is a threshold, objective requirement.

The CA held that the first requirement is a threshold, objective requirement that does not involve the subjective consideration of the Singaporean consumer’s perspective.

First, the CA reiterated that statutory provisions must be interpreted in a manner to give effect to its purpose. The court should look first to the text of the provision in the GIA. The CA rejected AGWI’s attempt to rely on Article 6(2) of the Regulation on Quality Schemes for Agricultural Products and Foodstuffs, EU Council Regulation 1151/2012, [2012] OJ L 343/1 to interpret section 41(1)(f) of the GIA, as the EU GI regime was contextually distinct from the Singapore GI regime. The CA also agreed with Prof Ng-Loy Wee Loon (the appointed independent counsel) that EU GI law is found in multiple regulatory directives, unlike Singaporean GI legislation.

Second, the CA held that the courts should look to the legislative intent behind the GI protection framework. Prof Ng-Loy pointed out that Article 10.22(8) of the Free Trade Agreement between the European Union and the Republic of Singapore (“EUSFTA”)⁽³⁾explicitly preserves the right to protect the name of a plant variety or animal breed as a GI. The CA further observed that the side letter to the EUSFTA, containing an agreement between Singapore and the EU, was accordingly reflected in section 15(b) of the GIA. Section 15(b) allows the registration of GIs which contain a name of the plant variety, provided that such registration does not prevent the use of the name as a plant variety.⁽⁾Acknowledging the above context, the CA agreed with Prof Ng-Loy that the GIA essentially recognises that what is objectively a plant variety, or an animal breed, can be used in both a trade and a GI capacity.

Third, the CA rejected the Consorzio’s attempt to interpret section 41(1)(f) as a subjective test that considered the perspective of a Singaporean consumer. The Consorzio argued that based on academic observations, there is a close relationship between trademark law and GI law such that considerations of consumer customs and practices subsist in section 41(1)(f). However, the CA rejected the Consorzio’s argument. First, the CA highlighted the differences between trademark and GI law. While the function of a GI is to assure consumers that products carry certain characteristics attributable to a particular region or territory, a trademark has no such limitation. Additionally, a GI can be used by all traders whose products possess these characteristics, while a trade mark belongs to a particular trader. Second, the historical development of trade mark law is distinct from GI law. Trademark law arose from the adjudication of deceit claims and comprises a proprietary right. In comparison, GI law arose from unfair competition laws, as well as the abovementioned attempts to prevent fraud in the French wine marketplace.

(2) The second requirement relates to the Singaporean consumer’s confusion over the true geographical origin of the product.

First, the CA clarified that all references to “the consumer” in section 41(1)(f) of the GIA referred to the Singaporean consumer, which meant Singapore citizens and residents, and not those who are merely passing through Singapore.

Second, the CA observed that this requirement could apply in a case where there is a change in the scientific or legal name of the plant variety or animal breed. In such a case, so long as there is evidence that shows that the Singapore consumer recognises the product by the old name, an objective determination would mean that the GI containing the old name would be a GI that contains the name of a plant variety, or an animal breed. The CA further opined that an opposition under section 41(1)(f) of the GIA could succeed in such a situation, even where there was evidence to show that many people use the new name exclusively and consider the old one obsolete.

Third, the CA clarified that the term “true origin” in section 41(1)(f) of the GIA referred to the true geographical origin of the product rather than the true plant origin of the product. The function of a GI is to indicate the geographical origin of the product. The CA also agreed with Prof Ng-Loy that in various instances, the draftsman of the GIA regarded the term “true origin” as having the same meaning as “true geographical origin”, and that the EUSFTA explicitly references the “true origin” of the goods (as indicated in the GI).

Lastly, the CA affirmed the HC’s decision that the question posed by this requirement was 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 CA listed three non-exhaustive factors which it held was relevant in this inquiry: first, whether the average Singaporean consumer is aware that the name in question is indeed the name of a plant variety or animal breed; second, whether the average Singaporean consumer is aware that the plant variety or animal breed in question is involved in the production of the product over which GI protection is sought; and third, an examination of the exact GI sought to be registered and the message that it conveys. On this third factor, the CA noted that a “GI that is identical with the name of the plant variety or animal breed would convey a very different message to the Singapore consumer as opposed to a GI that contains other words in addition to the name of the plant variety or animal breed”.

B. Applying this approach, does AGWI’s ground of opposition under section 41(1)(f) of the GIA succeed?

The CA held that AGWI was not able to establish that the Singaporean consumer was likely to be misled by the Application GI.

First, AGWI chose to rely on advertising materials as well as statistics to show the increase in the volume of Australian “Prosecco” imported into Singapore. While these materials provide some evidence as to how the product in question was marketed to Singapore consumers, the CA stated that consumer surveys would have been a more direct way of demonstrating whether the Singapore consumer was misled. Furthermore, where the results of consumer surveys were provided to the court, the party carrying out the surveys should also provide evidence on how the survey was conducted, what questions were asked, and the demographics of those surveyed. This would allow the court to make an assessment whether the results of the consumer survey can indeed be accepted as evidence that the consumer is likely to be misled by the GI.

Second, the CA rejected AGWI’s evidence that statistics showing the increase in volume of Australian “Prosecco” imported into Singapore is indicative of the Singaporean consumer being misled. The CA disagreed with the HC and stated that such evidence was insufficient. The evidence did not address the material inquiry, namely whether Singapore consumers might be aware that “Prosecco” is also the name of a grape variety used to make wine of the same name. Such statistics only showed an increase in local demand.

IV. Lessons Learnt.

The GIA is a relatively new piece of legislation, as it was amended to give effect to the recent EUSFTA. Thus, the CA’s clarification of the section 41(1)(f) inquiry is timely. Various trademark decisions around the world show that GIs are increasingly used due to community - based desires to legally enshrine the geographical history and legacy of their product.

Notably, substantive evidence of the Singaporean consumer’s confusion is required to make out a section 41(1)(f) claim. Given the CA’s finding that advertisements or consumption statistics are insufficient to show whether a consumer may likely to be misled, it is important for parties to consider gathering strong evidence of consumer preferences, knowledge, and data, that can then be relied on in court proceedings.

Written by: Lai Chee Yuen, 2nd Year LLB student, Singapore Management University Yong Pung How School of Law.
Edited by: Bryan Leow, Adjunct Faculty, Singapore Management University Yong Pung How School of Law.

Footnote

_{(1)       Section 41(1)(f) of the GIA requires that a geographical indication which contains the name of a plant variety or animal breed not be registered if it is likely to mislead the consumer as to the true origin of the product.
(2)       Section 41(1)(a) of the GIA requires that an indication which does not fall within the meaning of “geographical indication” as defined in s 2 of the GIA not be registered. Section 2 of the GIA defines “geographical indication” as any indication used in trade to identify goods as originating from a place, provided that (a) the place is a qualifying country or a region or locality in a qualifying country; and (b) a given quality, reputation, or other characteristic of the goods is essentially attributable to that place.
(3)       Article 10.22(8) states that: “Nothing in Sub – Section C (Geographical Indications) shall prevent a Party from protecting as a geographical indication […] a term that conflicts with the name of a plant variety or animal breed.”}