Wednesday, December 11, 2013

Prosecco GI Registration Denied in Australia

Waiter pouring Zardetto sparkling Prosecco

The Winemakers Federation of Australia’s objection to the European Commission’s move to register the Italian GI Prosecco as an Australian GI (Geographical Indication) was recently upheld by the Australian Deputy Registrar of Trade Marks, under the basis that the term has been extensively used (and is still being used) in Australia as a term for ‘a variety of grapes.’

The European Union is still actively campaigning to improve the protection of geographical indications internationally, establishing distinct legislation to protect GIs in the wine and spirits industry, among others. Some of the more famous EU GIs that have been protected include Champagne, Port and Sherry, the local variations of which have since been renamed to sparkling wine, tawny and apera, respectively.

The European Commission’s main argument is that Australian winemakers’ use of the term ‘Prosecco’ for a variety of grapes will confuse consumers. The EC claimed Australian consumers have an inherent understanding of the term as denoting geographic location instead of variety, citing the marketing of Prosecco by reference to Italy and Prosecco’s Italian origin itself.

The Deputy Registrar noted there is confusion internationally as to whether Prosecco is a type of wine, a variety of grape, or a geographical indication, and further, that Australian producers have been using the term since 1994 as the only official name for a certain variety of grape. The Deputy Registrar also noted that registering Prosecco as a GI will prevent producers from using the term as the name of a grape variety (rather than as a type of wine). The Wine Australia Corporation Act 1980 is designed to prevent this from occurring, while protecting geographical indicators relating to wine.

European GIs have made strong headway into Australia through the operation of the Wine Australia Corporation Act. Wine Australia is responsible for the Register of Protected Geographical Indicators. This is divided into four parts.

Part 1 - Australian geographical indications, foreign country geographical indications and translations of those geographical indications and any conditions of use applicable to those indications.

Part 2 – Traditional expressions in relation to wines manufactured originating in a foreign country and any conditions of use applicable to those indications.

Part 3 – Quality wine terms for wines originating in Australia and any conditions of use applicable to those terms.

Part 4 – Additional terms and any conditions of use applicable to those terms.

The Register lists many hundreds of European GIs, each protected from use by the Australian wine industry, resulting in:

a. administrative misconceptions on how the Register should work, leading to proceedings such as the Feet First decision which I argued in 2005 – see http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/ATMO/2005/69.html . In this case, an examiner prevented Australian winemakers from registering as a trade mark the brand “FEET FIRST” (an idiom meaning “to leap with abandon”) because the Furst region in Germany was a geographical indicator on the Register. This was despite the German trade mark registry permitting non-German wine makers to register as trade marks brands incorporating the word “First”;

b. increased compliance costs for Australian wine makers. Arguably, Australian consumers who do not live in proximity to France and cannot be expected to recognise small French regional geographical indicators think that “champagne” is sparkling wine and not wine from the Champagne region: “Burgundy” is a type of dry white wine, and not a wine from the Burgundy region. Australian wine makers can no longer use those terms (leading to Tasmanian sparkling wine maker Jansz poking fun at the regime with its French language tagline, “Methode Tasmonoise”). Australian wine makers when adopting a new brand must avoid adopting a name resembling any of the hundreds of European geographical names, some of which may not be or never will be sold in Australia.

The Prosecco decision is an appropriate limitation on the preponderance of GIs, and provides more (overdue) guidance on how GIs should impact the Australian wine industry.

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