On 22 November, the Australian Trade Marks Office handed down its decision in Winemakers’ Federation of Australia v European Commission [2013] ATMOGI 1 (22 November 2013) (“Winemakers”), rejecting an application by the European Commission to list “Prosecco” as a geographical indication (“GI”) of Italy.
A GI is defined at section 6 Trade Marks Act 1995 (Cth) as, in relation to goods:
a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
The effect of a GI is that no other product can use the geographical regions’ name, unless it is from that country, region or locality. Examples of GIs that are protected in Australia include Parmigiano Reggiano cheese, Parma ham, Coonawarra wine and Champagne.
In Australia, wines are also regulated by the Wine Australia Corporation Act 1980 (Cth) (the “Act”) and its Regulations (the “Regulations”). The Act and Regulations allow for an application to be made for a GI, and also for objections to be made on several grounds. One of these grounds, at reg 58(5), is common usage of the GI. Under reg 58 (5):
A person may object to the determination of a proposed item on the ground that the proposed item is used in Australia:
(a) as the common name of a type or style of wine; or
(b) as the name of a variety of grapes.
In this case, the Winemakers’ Federation of Australia objected to the European Commission’s application to have “Prosecco” registered as a GI under reg 58(5)(b) of the Regulations. The Deputy Registrar hearing the case was satisfied that the WFA had proved that “Prosecco” was the name of a variety of a grape, and so could not be registered.
The Deputy Registrar held that:
- a number of nurseries and horticultural suppliers use the name “Prosecco” as the name of grape varieties for sale;
- “Prosecco” was officially accepted as the name of a variety of grape by European regulations and within Italy until 2009; and
- “Prosecco” was described and presented as a variety of grapes on wine labels.
He refused to act on a request by the European Commission to exercise his discretion to allow the GI under reg 68.
The final decision on the European Commission application is, under the Act, in the hands of the Geographical Indications Committee, and the Commission also has the right to appeal to the Federal Court. However, given this decision, it looks like Australian winegrowers’ right to use “Prosecco” will remain intact.
So when it is time to pop a few corks on Christmas day, let’s all scream PROSECCO!!!
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The team at IP Whiteboard would like to wish all our readers the very best for the festive season. We will be taking some time off to relax with our families, but will be back, refreshed and raring to write in 2014.
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