In Corsorzio di Tutela della Denominazione di Origine Controllata Prosecco v Australian Grape and Wine Incorporated [2023] SGCA 37 (“the ‘Prosecco’ case”), the Singapore Court of Appeal (“SGCA”), the apex court of Singapore, was tasked to consider whether ‘Prosecco’ ought to be registered as a geographical indication for ‘Prosecco’ wine from the Northeast region of Italy, including the entire territory of Belluno, Gorizia, Padova, Pordenone, Treviso, Trieste, Udine, Venice, and Vicenza.
 
Opposition emanated from a representative body for grape growers and winemakers in Australia (“AGWI”), on the basis that ‘Prosecco’ refers to a grape plant variety. The Australians evidently wished to market wines produced in Australia from the grape variety as ‘Prosecco’ also (which registration by the Italian Corsorzio would restrict, at least in Singapore).
 
At the heart of the ‘Prosecco’ case before the SGCA was section 41(1)(f) of the Singaporean Geographical Indications Act 2014 (“SG GIA”) which prescribes that “a geographical indication 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” shall not be registered. Put another way, the main issue revolved around whether section 41(1)(f) could apply in favour of the Australians against registration of ‘Prosecco’ as a geographical indication as sought by the Italians, in respect of use in Singapore.
 
The SGCA held that an inquiry under section 41(1)(f) of the SG GIA ought to be approached in the following manner: 

Ultimately, while accepting that ‘Prosecco’ is objectively the name of a grape variety (notwithstanding a renaming of the variety to ‘Glera’ in the European Union), the SGCA found it impossible to infer from the evidence presented by AGWI the sort of knowledge which the Singaporean consumer would have had of the grape variety used to produce the wine ‘Prosecco’. It concluded that AGWI failed to establish that the geographical indication sought by the Italian Corsorzio would likely mislead the Singapore consumer as to the true geographical origin of ‘Prosecco’¹.
 
This commentary being written from the Malaysian perspective, it is perhaps important to highlight that there is no exact equivalent to section 41(1)(f) of the SG GIA in the Malaysian Geographical Indications Act 2022 (“MY GIA”). However, registration of a geographical indication can be refused under section 10(1) of the MY GIA where: “(g) the geographical indication in relation to the goods is of such a nature which may mislead the public as to the true place of origin of the goods”. So, while plant varieties and animal breeds are not specifically mentioned in potential grounds of refusal under the MY GIA, we arguably have in section 10(1)(g) a broader form of the bar to registration spelt out by section 41(1)(f) of the SG GIA, under which a challenge akin to the ‘Prosecco’ case could be brought in Malaysia. Perhaps notable also is that the MY GIA affords opportunity for interested parties to oppose pending applications² as well as to apply to Court for cancellation of already registered geographical indications³, either of which can be premised on section 10(1)(g) of the MY GIA and various other grounds.
 
However, as a general observation, disputes over geographical indications (or the related common law tort for extended passing off) in Malaysia are uncommon. Compared with neighbouring Singapore where another geographical indication dispute over protection for ‘Parmesan’ as a translation of registered geographical indication ‘Parmagiano Reggiano’ also recently took place⁴, Malaysia has not seen similar fights over on our side of the causeway since our apex Federal Court handed down a decision regarding the description ‘Swiss chocolate’ in 2016⁵ (which also considered the scope of geographical indications under the now repealed Geographical Indications Act 2000).
 
Against this backdrop, it should be noted that section 9(1) of MY GIA read with Guidelines of Geographical Indications 2022⁶ means that geographical indications can only be registered in Malaysia in respect of limited categories of goods.⁷ These categories currently extend to Class 1: Wines and Spirits, Class 2: Prepared foodstuff and beverages (including coffee, tea, cocoa, beer, chocolate and select others), Class 3: Select agricultural, aquacultural, horticultural products (including vegetable, fruit, meat, flowers, unprocessed grains and select others), Class 4: Handicraft and Class 5: Textiles (other than handicraft).
 
Searches on the Intellectual Corporation of Malaysia (MyIPO)’s online search database indicates at least 89 geographical indications currently registered in Malaysia. A large number of these registrations are local (e.g., Sarawak Pepper, Bario Rice, Kek Lapis Sarawak, Mangga Harumanis Perlis, Asam Pedas Melaka etc) with a smaller number which are foreign (e.g. Scotch Whisky, Champagne, Irish Whiskey, Gorgonzola, and lo and behold, Prosecco!).
 
By contrast to Malaysia, there appears to be 167 geographical indications registered in Singapore based on the online search database of the Intellectual Property Office of Singapore (IPOS). However, a large number of these originate from European countries/territories. So, why the disparity? Perhaps the answer lies with traditional geographical indication concerns often stemming from wines and spirits⁸ to which the Malaysian market may be less open. Or perhaps the answer lies in the fact, as observed by Justice Judith Prakash in the opening lines of the ‘Prosecco’ case, that much of the food in Singapore is produced abroad.
 
For now, viewed from Malaysia, we can sit back and savour the sparkling charms of Prosecco (Italian, naturally) unless another fruity feud erupts to sour the grapevine and an application is filed in Court to cancel the registered ‘Prosecco’ geographical indication on Malaysian soil.
 
Article by Melissa Long (Partner) of the Intellectual Property Practice of Skrine. 
 

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