The UK’s Intellectual Property Office (IPO) has issued a trade-mark decision (Trademark Inter-partes Decision O/359/09 [.pdf] – hat tip to Harbottle & Lewis LLP) of significance for the creators of fictional brands: the IPO refused a trade-mark application on the basis that a protectable goodwill interest had arisen in a fictional brand of beer.
Viewers of the long-running English soap opera Coronation Street will recognize the name at the centre of the matter: Newton & Ridley. N&R is a fictional brewery and brand of beer which is depicted in the fictional Coronation Street world – it is served in the fictional pubs which populate the fictional world, a world replete with N&R bar taps, beer mats, delivery vans and even a fictional history of the business dealings of the N&R brewery.
A company, evidently unaffiliated with ITV (the producer and broadcaster of Coronation Street), called itself Newton & Ridley Beer Company Limited, and filed an application for registration of "Newton & Ridley" in connection with the sale of certain alcoholic beverages (namely, "Beer; ale; lager; stout and porter"). ITV opposed the application, relying on its own registered mark for N&R in the "printed matter" category (which included beer mats), and the goodwill which had accrued to the mark by virtue of ITV’s continuous visual use of the mark in the show since the 1960s. ITV had also evidently for a number of years sold an actual beer using the name Newton & Ridley until a change in the Ofcom Broadcasting Code earlier this decade made it untenable for ITV to continue such sales. It was also pointed out by ITV that allowing the third party company to sell the beer using the mark would, because the Ofcom Broadcasting Code prohibits giving "undue prominence" to a product or service, have the perverse result of effectively preventing ITV from continuing to show the N&R brand, which it had created, on its own show.
The IPO accepted the arguments of ITV, recognizing that goodwill had accrued to ITV in respect of the mark not from the sale of beer by ITV (which had stopped in 2005) but from "the exposure of NEWTON & RIDLEY on Coronation Street itself". The creation and depiction of a fictional brand, in short, can have real world impact and value. That goodwill and "attractive force" meant that purchasers of the unauthorized Newton & Ridley beer would be confused into thinking it had some connection with the television show. Accordingly, the mark was not registered.
The IPO took note of a similar decision reached by the Federal Court of Australia (Twentieth Century Fox Film Corporation and Matt Groening Productions Inc v the South Australian Brewing Co Ltd and Lion Nathan Australia Pty Ltd [1996] FCA 1484) in connection with the sale by a brewery attempting to register a trade-mark for Duff Beer. Regrettably, no reported cases appear to address the possibility of using Elsinore Beer.
