Australian Grape & Wine (AGW) has been engaged in a longstanding legal case, since 2019, regarding the registration of Prosecco as a Geographical Indication (GI) in Singapore. The Italian Prosecco Consortium (Consortium) had applied to register the term Prosecco as a GI in Singapore and AGW had opposed the registration. Over this time the case proceeded through a number of courts, ending up in the Singapore High Court with a decision held in our favour to deny the registration based on the grounds that Prosecco is a recognised plant (grape) variety. The Italian Prosecco Consortium appealed this decision in the Singapore High Court’s Appellate Body, which was the final avenue of appeal available to it.
As the case was considered a novel and complex piece of law the Appellate Body appointed an Independent Council, Professor Ng-Loy Wee Loon S.C. (a distinguished IP academic in Singapore), and a 5-person panel of judges. Our hearing before the Singapore High Court Appellate Body was held on 10 August 2023 with the panels final verdict being handed down on 8 November 2023.
The judgment established that AGW bears the burden of proof as the party opposing the initial registration of the GI Application. The judgment was considered on two main grounds:
The court found that AGW successfully proved (grounds 1) that Prosecco is objectively the name of a plant (grape) variety. However AGWs available evidence was not sufficient to prove to the court that registering Prosecco as a GI in Singapore was likely to mislead the consumer as to the true origin of the product (grounds 2).
Aspects of Singaporean consumer understanding of the term had not been tested as part of the case to this point. While AGW’s evidence included importer and retailers’ declarations of their understanding of Prosecco as a grape variety, advertising material and information showing the volumes of Australian Prosecco entering the market we did not have sufficient evidence to prove consumer insight data to make these grounds. The Court emphasised the importance of consumer surveys in proving consumer perception which was not possible or part of our existing evidence.
While the judgement ultimately found against AGW and allowed the registration of the GI to proceed, it has also established objectively that Prosecco is grape variety. What this means for the future of Australian Prosecco in the market remains unclear, but we are continuing to seek clarification.
AGW will hold a session with Australian Prosecco producers to discuss the outcome in the coming weeks.
