ITV wins battle for Corrie brewery

Published on Sunday 22 November 2009 21:25

ITV Studios Ltd has successfully prevented the registration of the trade mark Newton & Ridley by another company. Newton & Ridley is the fictional brewery and owner of the Rovers Return pub in Coronation Street.

In April 2007, Newton & Ridley Beer Company Ltd of Sunderland applied under the Trade Marks Act 1994 for registration of the trademark Newton & Ridley in respect of the following goods in Class 32: "Beer; ale; lager; stout and porter". ITV had already registered the mark in Class 16: "Printed matter etc…"

ITV's opposition was accepted because misrepresentation will exist as consumers, on seeing the sign Newton & Ridley used in respect of beer, will assume the beer producer has been licensed to use the trademark by the maker of Coronation Street.

In May the Newton & Ridley Beer Company Ltd was ordered to change its name following a successful application under the Companies Act 2006 by ITV Productions Ltd.

How skilled is skilled?

THE UK courts have answered a question as to whether the notional "person skilled in the art" who construes or interprets a patent is expected to know anything of patent law and procedure.

The answer is yes, according to the recent Court of Appeal case Virgin Atlantic v Premium Aircraft Interiors. As well as knowing about the subject, the person skilled in the art is taken to know a bit about patents.

In a previous case, the House of Lords observed that the words of a patent claim will usually have been chosen on skilled advice. The specification is not a document inter rusticos– ie, to be looked at among rustics or illiterates – for which allowances should be made.

There are explicit rules by reference to which a patent and its claims are framed. These underlying principles have now been expanded into a checklist set out in various cases.

The "person skilled in the art" is not a blinkered individual knowing everything about the subject matter but nothing about patent law and practice; that person is taken to know at least some basics about patent law and practice, so that their view can be formed in context.

Sweeping changes to Euro patent rules

&#149 THE Administrative Council of the European Patent Office has issued two decisions under its powers to amend the rules implementing the European Patent Convention. These decisions amend the European patent rules substantially and the changes will come into force on 1 April 2010.

They have at least partly been motivated by the Administrative Council's desire to accelerate the prosecution of European patent applications.

It is therefore unsurprising that the changes are likely to impact on applicants' filing and prosecution strategies.

It is further believed these changes will bring forward many of the costs of patent prosecution. Therefore, it is essential that all patent owners or pending applicants start to consider their portfolios now and take the necessary action. A full briefing on the changes can be found on the EPO website and a step-by-step guide found on the Marks & Clerk website.

Chance to be master of your domain

&#149 ALONGSIDE the introduction of domain names using non-Latin characters, another shake up at ICANN (Internet Corporation for Assigned Names and Numbers ) is the proposed introduction of an unlimited number of generic top level domain names (gTLDs), which purports to allow for a greater choice for internet-users.

Under the proposal applicants will be able to apply to register domain names with any extension that is available, such as generic terms like ".food" or trademarks like ".kodak".

Brand-owners, however, have raised concerns about the proposals, namely that expansion of gTLDs will create greater opportunities for cybersquatters and increase costs for brand-owners in defending their rights.

ICANN is considering solutions to diffuse potential problems. These solutions currently include a "thick" WHOIS database containing more detailed registrant information, and a dispute procedure giving trademark owners an avenue to lodge complaints of abusive behaviour.

It remains to be seen whether the concerns of brand-owners materialise in practice. A greater choice of domain names may actually mean there is less competition to register certain ones. For many brand-owners there may not be much of an appetite in the marketplace to use gTLDs other than dot-com, and third parties may not take up the new gTLDs.

&#149 Lightbulb Moment is compiled by Marks & Clerk. Contact [e-mail] or visit www.marks-clerk.com