Prosecco describes a grape variety and is not a protectable GI

The Wine Australia Corporation Act 1980 (“the Act”) and its Regulations (“the Regulations”) sets out the process for protection of a foreign geographical indication (“GI”) in Australia by countries which have an agreement relating to trade in wine with Australia, which specifically includes the European Union (“EU”).

Under the agreement with the EU various European Community GIs are protected in Australia and cannot be used on Australian labels. Examples of protected GIs include Champagne, Côtes du Rhône, Sancerre, Mosel, Tokaji, Asti Spumante, Chianti, Marsala, Port, and Sherry.

Under the Act, the term Geographical indications is defined as meaning: “in relation to wine goods, means an indication 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”.

On 1 April 2010 the European Commission (“EC”) requested that the term Prosecco be listed on the Register of Protected Geographical Indications and Other Terms (“the Register”) as a GI for Italy. The Winemakers’ Federation of Australia (“WFA”) objected under reg 58(5)(b) on the ground that the proposed item is used in Australia as the name of a variety of grapes.

WFA filed evidence showing that Prosecco was used as the name of a grape variety in Australia and even in Europe until 2009, on wine labels[1], research paper and book extracts; catalogues from nurseries, the International list of vine varieties and their synonyms produced by the OIV[2] and excerpt from EC Regulation No. 1166/2009 providing for the renaming of vine variety Prosecco as "Glera" in the EU.

The Deputy Registrar found that it was clear that a number of nurseries and horticultural suppliers use the name Prosecco as the name of grape varieties for sale. The evidence showed that the first imports of Prosecco vines date back to at least 1997 and the first commercial quantities of wine made from Prosecco grapes and labelled accordingly were produced in Australia in 2004. Throughout this time, Prosecco was officially accepted as the name of a variety of grape by European regulation and within Italy.

While the number of vineyards in Australia growing Prosecco and the total area under cultivation were found to be “very small” there had been significant activity in planting and cultivating vines and planning to produce wine from this grape variety. In Australia, as in New Zealand, the wine industry relies significantly on marketing wine by grape variety.

The Deputy Registrar found that the term Prosecco had been used in Australian as the name of a grape variety before the date of application for the GI and refused to entry of the GI onto the Register.

Elena Szentivanyi – 7 January 2014

[1] See for example Brown Brothers and DalZotto labels

[2] Organisation Internationale de la Vigne et du Vin (International Organisation of Vine and Wine)

MoST Content Management V3.0.8886