Italian producers toast Singapore victory in country’s first-of-its-kind GI case

Ruling allows for registration of the term ‘Prosecco’ in Singapore | Court considers 2019 Geographical Indications Act for first time | Discussion of terroir vs unfair competition approaches.

A Singapore court has granted the use of the term ‘Prosecco’ for wines originating from a specific region in Italy—the first ruling of its kind in the country.

The Court of Appeal of the Republic of Singapore’s decision comes after it dismissed opposition from the  Australian Grape and Wine Incorporated (AGWI).

The case marked an important moment in the country's interpretation and application of Geographical Indications (GIs).

This appeal was the first instance where the Singaporean court had to interpret provisions under the Geographical Indications Act (GIA), which came into force in 2019.

The issue in the appeal related to a section of the GIA that states a proposed GI that includes the name of a plant variety or an animal breed and is likely to cause confusion among consumers regarding the actual origin of the product, cannot undergo registration.

Italian trade body registers ‘Prosecco’

The  Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, a trade body based in Italy, sought to register ‘Prosecco’ as a GI for wines in Singapore, designating the North East region of Italy as the geographical area of origin in May, 2019.

The application was accepted and published in the GI Journal in June 2019.

AGWI, representing grape growers and winemakers in Australia, opposed the registration on two grounds.

First asserting that the application contained the name of a plant variety and was likely to mislead consumers, and second, arguing that the application did not meet the definition of a GI.

The principal assistant registrar of GIs dismissed AGWI's opposition, citing the popularity and reputation of Italian Prosecco wines in Singapore.

AGWI appealed to the General Division of the High Court, where the judge ruled in favour of AGWI.

The judge concluded that the application GI, objectively containing the name of the Prosecco grape, would likely mislead consumers if significant quantities of Prosecco grapes and wines were produced outside the specified region.

Consorzio appealed against the judge's decision.

The Court of Appeal stated that for the provision to be applicable, there needs to be proof, based on clear facts, that the suggested GI includes the recognised name of a plant variety or an animal breed.

In this particular case, the Court of Appeal determined that AGWI met the requirements by objectively demonstrating that Prosecco is the name of a plant variety.

However, the court pointed out that the evidence presented by AGWI failed to demonstrate that Singapore consumers were likely to be misled by the GI.

The terroir approach or unfair competition?

In the recent judgment, the court delved into the historical context of GIs, tracing their roots to France's efforts to combat fraud in the wine market in the late 1800s.

The terroir approach, emphasising the connection between a product's qualities and its region of origin, was highlighted as one of the two main approaches to GIs.

This approach aims to protect the relationship between products and their terroir, offering consumers accurate information about the geographical origins of a product.

The Singapore appeal court’s verdict distinguished the terroir approach from the unfair competition approach, where the focus is on establishing a valuable reputation in the marketplace for a regional product.

This reputation, supported by evidence such as sales figures or consumer surveys, does not necessarily have to be causally linked to geographical origin, the court said.

The counsel for Consorzio was Sivagnanaratnam Sivananthan, Teo Tze She, Loy Ming Chuen Brendan and Mok Ho Fai from  Bird & Bird.

The counsel for AGWI was Ravindran Muthucumarasamy, Chan Wenqiang, Brandon Lim Sheng Yuan from  Ravindran Associates.

Finally, Prof Ng-Loy Wee Loon, a faculty of law from the  National University of Singapore acted as independent counsel.