Lord of the Fries defeats Lord of the Rings: a tale of trade marks

A recent decision[1] by the Australian Trade Marks Office (ATMO) has allowed the trade mark application for the words "LORD OF THE" by Lord of the Fries IP Pty Ltd ("Lord of the Fries"), an Australian vegan fast-food chain, to proceed to registration, dismissing an opposition to registration by Middle-earth Enterprises, LLC ("Middle-earth Enterprises"), the intellectual property rights holder for The Lord of the Rings franchise. Middle-earth Enterprises opposed the application on the basis that "LORD OF THE" was deceptively similar to "LORD OF THE RINGS" and it unfairly leveraged the reputation of the famous fantasy series.

The Hearing Officer, Nicholas Smith, examined five primary grounds of opposition raised by Middle-earth Enterprises.

Ground of Opposition

Deceptive Similarity

An application for the registration of a trade mark in respect of goods must be rejected if it is substantially identical with, or deceptively similar to, another registered trade mark in respect of similar goods or closely related .

In considering whether the marks were substantially identical, the Hearing Officer conducted a side-by-side comparison of the "LORD OF THE" and "LORD OF THE RINGS" and found that:

• the absence of "RINGS" in the Applicant's mark created a "total impression of dissimilarity"; and
• the term "RINGS" is not descriptive and is an essential, distinctive feature of the mark "LORD OF THE RINGS".

Accordingly, the Hearing Officer held that the marks were not substantially identical.

On the question of deceptive similarity, the Hearing Officer assessed the impression that persons of ordinary intelligence and memory would form based on a comparison of "LORD OF THE" and "LORD OF THE RINGS".

He did not accept Middle-earth Enterprises' assertion that the phrase "LORD OF THE" immediately brings to mind "LORD OF THE RINGS". Instead, he found that "LORD OF THE" ' is a phrase that conveys the idea of having power, authority or mastery over effectively any domain, including examples such as:

• 'flies' (as in William Golding's novel, Lord of the Flies);
• 'dance' (as in the popular Irish dance company, Lord of the Dance); and
• 'fries' (as used by Lord of the Fries).

Consequently, the Hearing Officer held that the marks were not deceptively similar.

Ownership

The registration of a trade mark can be opposed on the ground that the applicant is not the owner of the trade mark. The first owner of a trade mark is the person who first uses it in Australia, or the first to file an application with an intention to use the mark.

As the Hearing Officer had already concluded that the marks were not substantially identical (as set out above), this ground of opposition was also dismissed.

Reputation and Consumer Confusion

The registration of a trade mark may be opposed on the basis that there is another trade mark with a significant reputation in Australia, such that the use of the new mark would likely deceive or cause confusion.

Middle-earth Enterprises led evidence of The Lord of the Rings franchise's significant reputation in books, films, and video games. However, the Hearing Officer held that the evidence of the franchise's significant reputation did not extend to food products such as those sold by Lord of the Fries.

The Hearing Officer found no reasonable likelihood that consumers would assume "LORD OF THE" was associated with The Lord of the Rings.

Misleading or Deceptive Conduct

An application for the registration of a trade mark must be rejected if it its use would be contrary to law. Middle-earth Enterprises argued that the use of "LORD OF THE" is contrary to law because it is misleading or deceptive under the Australian Consumer Law.

As the Hearing Officer had already rejected the claim discussed in 3 above, which is a more stringent test than the test for misleading or deceptive conduct under the Australian Consumer Law, this ground of opposition was also dismissed.

Bad Faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

Middle-earth Enterprises alleged that Lord of the Fries registered "LORD OF THE" to exploit the fame of The Lord of the Rings franchise. However, the Hearing Officer found that Lord of the Fries had used a variation of the trade mark for nearly 20 years (Lord of the Fries), and there was no evidence of dishonest intent. As a result, the bad faith claim was rejected.

Conclusion

Having dismissed all grounds of opposition, the Hearing Officer allowed the trade mark to proceed to registration, and Middle-earth Enterprises was ordered to pay Lord of the Fries' legal costs.

This decision reflects a growing concern about expansive trade mark claims by large corporations, particularly when smaller businesses have independently built their own brand recognition. Businesses seeking to oppose trade mark registrations must provide substantial evidence of reputation and potential consumer deception, beyond merely general brand recognition.

[1] Middle-earth Enterprises, LLC v Lord of the Fries IP Pty Ltd [2024] ATMO 48