On 3rd May 2019, the company Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (“the Applicant”) filed an application for a geographical indication for the name ‘Prosecco’ in relation to wines. The subject application was opposed by Australian Grape and Wine Incorporated (“the Opponent”) on 9th September 2019, further to publication.
The Opponent opposed the application on two grounds:
1. The indication is likely to mislead the consumers as to the true origin of the product (Section 41(1)(f) of the Geographical Indications Act (No. 19 of 2014) (the “GIA”).
The main arguments of the opponent are:
1. the fact that the average customer in Singapore will not recognise ‘Prosecco’ as originating exclusively from a specific region of Italy; and
2. the fact that customers in Singapore would be misled into thinking that ‘Prosecco’ refers to a wine coming specifically from Italy, while it could, in fact, originate from other countries such as Australia.
The opposition was refused on this ground, based (among others) on the following reasons:
– the opponent did not establish that consumers have been misled;
– consumers of wine and Prosecco are likely to pay special attention to the products they buy, and to its grape variety and country of origin. As such, they are not likely to be misled; and
– the country of origin of the wine is, most of the time, indicated on the bottle.
2. The indication “does not fall within the meaning of “Geographical Indication” as defined in section 2” as per Section 41(1)(a) of the GIA.
While the opponent submitted that the average consumer in Singapore does not identify ‘Prosecco’ as originating from a specific region, the IP Adjudicator found that the perception of the GI by the consumers is irrelevant.
In addition, he refused to take into consideration a report by the Faculty of Law of Monash University titled, “The European Union’s attempts to limit the use of the term ‘Prosecco’” which stated that the factor in determining ‘Prosecco’ is the grape variety grown and not the origin. Since this report was prepared at the Opponent’s request, it could indeed lack objectivity.
As such, this ground of opposition failed as well.
Accordingly, the registration of the subject GI will proceed further to registration, bearing in mind that the parties have 28 days to file an appeal with the High Court.
You can explore the details of this case, as published on the IPOS website, here.
What can be learned from this decision?
The burden of proof falls on the Opponent and the grounds must be supported by the relevant evidence. In other words, if the Opponent discharges its burden of proof on the grounds raised, the Opposition would then fail.
Preparing the supporting document is therefore critical to optimise your chances of success in an opposition proceeding.
At IPHub Asia, we can help you obtain protection for your geographical indications. If you need assistance in this connection, please do get in touch. You can also visit our website to learn more about our company and the services we provide.
