In a decision of the Registrar of Trade Marks under the Wine Australia Corporation Act 1980 (Cth) and the Regulations made under that Act (the Wine Act), the Deputy Registrar of Trade Marks (as a delegate of the Registrar of Trade Marks) has upheld an objection to the application lodged by the European Commission which had sought to register the Italian geographical indication (GI) Prosecco as a GI in Australia. The basis of the decision was that the term had been used (and continues to be used) in Australia "as the name of a variety of grapes".

In Winemakers Federation of Australia v European Commission [2013] ATMOGI 1 (the Prosecco Case) (available here), the Deputy Registrar upheld the objection made by the Winemakers Federation of Australia (WFA) to the registration of the Prosecco GI on the basis that it had “established use [by Australian producers of Prosecco] where on its face the clear meaning of the term is as a variety of grapes”). The Deputy Registrar made this finding based on the widespread use of the term Prosecco as the name of a grape variety at the time the name was first used in Australia and the fact that the term Prosecco was the only name that Australian producers were legally permitted to use in respect of the relevant grape variety.

In upholding the objection, the Deputy Registrar rejected the European Commission’s (EC) argument that the use by Australian winemakers of Prosecco as the name of a grape variety would be confusing because consumers understood Prosecco to “have a geographical rather than varietal connotation” based on the marketing of Prosecco by reference to Italy and Prosecco’s Italian Origin. The Deputy Registrar held that, in addition to the fact that Prosecco had been used with other indications of its Australian production, any “cultural and other similar references must be seen in the context of Australia as a migrant community where references to the rich tapestry of history and tradition of our forebears are commonplace.”

Additionally, the Deputy Registrar refused to exercise his (broad) discretion to direct the Geographical Indications Committee (GIC) to consider the Prosecco GI application, on the basis that, amongst other matters:

  • the confusion worldwide as to whether Prosecco is a GI, a grape variety or a style of wine;
  • that Prosecco has been available as a variety name for use by Australian producers since 1994 (and is the only official name for that grape variety); and
  • that the effect of registering the Prosecco GI would be to prevent producers from continuing to use Prosecco as the name of a grape variety (which is exactly the mischief that the Act is designed to avoid).

The Deputy Registrar’s decision means that the term Prosecco cannot proceed to determination by the GIC. It remains to be seen whether the EC will appeal the decision to the Federal Court.

The Deputy Registrar’s decision is of interest to both wine lawyers and trade mark practitioners generally. For wine lawyers, the Prosecco Case shows the way in which the Registrar of Trade Marks is likely to deal any other attempt to register grape varieties as GIs. Additionally, the decision shows that the discretion of the Registrar in these matters is a broad discretion that will take into account a number of factors — therefore, in casting arguments in such matters, practitioners should bring to the Registrar’s attention all relevant factors (and not just factors going to the inconvenience of the parties or to the “first in time” principle — see Rothbury Wines Pty Ltd v Tyrell [2008] ATMOGI 1). For trade mark practitioners, the Prosecco Case is another example of the increased consideration by the Trade marks Office of the impact of Australia’s migrant history on questions of confusion and recognition of foreign language terms.