http://ipkitten.blogspot.com/2025/03/one-trade-mark-to-rule-them-all-lord-of.html
Normally a decision of a delegate of the Australian Trade Marks Registrar wouldn’t attract much attention from the IPKat. But the subject matter of this decision has piqued some international interest: last week, an Australian fast food business successfully defended itself against an opposition brought by the owners of the IP related to The Lord of the Rings novels, in the matter of Middle-earth Enterprises v Lord of the Fries IP Pty Ltd [2025] ATMO 48.
Background
| “Boil ’em, mash ’em, stick ’em in a stew…” or make some popular vegan food Photos from Pixabay |
The Lord of the Rings needs no introduction: the popular fantasy novels were the basis for an extraordinarily successful film franchise, a recent TV show, and an abundance of related merchandise.
For more than 20 years, Middle-earth Enterprises, LLC, have been the owners of numerous registered trade marks in Australia for variations of the words LORD OF THE RINGS across many classes of goods and services, such as swords, figurines, clothing, entertainment services, and importantly, Trade Mark No. 887543 in Class 30 for “Confectionery; bakery goods and cereal-based products; flavourings for beverages; chocolate and cocoa-based beverages; jellies and ices, icecreams and edible ice blocks.”
Lord of the Fries is an Australian casual dining fast food chain that started as a food truck in Melbourne in 2004. The brand owners would have no desire for Samwise Gamgee’s stewed rabbit – let alone his chips with a nice piece of fried fish – albeit for a different reason than Gollum: the Lord of the Fries menu is entirely vegan.
The chain expanded to many restaurants across Australia (and briefly New Zealand), although the pandemic precipitated financial difficulties that culminated in the collapse of the leasing vehicle for its franchises in 2022. The brand continues to operate nine stores in Australia.
| Promotional images of the “Lord of the…” mac & cheese © Lord of the Fries |
In 2022, Lord of the Fries decided to expand its offerings with the launch of its “Lord of the…” vegan macaroni & cheese products. This coincided with a trade mark application for the words “LORD OF THE” in Class 29 (including goods like “French fries” and “vegan and plant based prepared meals and snacks”) and Class 30 (such as “prepared meals containing pasta, rice or wheat”, “bread, pastry and confectionery” and “ice cream”).
With the publication of this trade mark application, Middle-earth Enterprises’ eye became fixed upon Lord of the Fries.
The Opposition and Findings
Middle-earth Enterprises filed its notice of opposition in 2023. It opposed the trade mark registration on several grounds, including that the trade mark was similar to a trade mark which has acquired a reputation in Australia and the application was made in bad faith.
The hearing officer found that “LORD OF THE” and “LORD OF THE RINGS” were not substantially identical, since the absence of the “rings” element meant that a total impression of dissimilarity emerges from a comparison of the signs. The hearing officer determined that “The term ‘rings’ is not descriptive and is an obvious essential feature of the Opponent’s Trade Mark”.
As for deceptive similarity, the case law makes clear that the reputation of the earlier trade mark is not relevant to the analysis. The hearing officer noted that:
The phrase ‘lord of the’ has a meaning of having power, authority or mastery over a particular domain. The number of possible domains are essentially infinite, noting though the popular uses of the domains ‘flies’ (as in the book), ‘dance’ (the popular Irish dance company) and ‘fries’ (the use by the Applicant and/or its related entities). It does not obviously bring to mind any particular domain, let alone ‘rings’.
Regarding the protection of marks with a reputation, the hearing officer found that “the Opponent has acquired a very significant reputation in Australia in THE LORD OF THE RINGS mark and/or Opponent’s Trade Mark, sufficient for the requirements under s 60(a). However, this reputation is limited to books, movies and video games… this reputation does not extend to foodstuffs in any way and the only evidence of use in connection to foodstuffs in Australia is a single marketing campaign to promote the movie series that took place approximately 20 years before the relevant date.” Therefore, the applicant’s trade mark would not be likely to deceive or cause confusion.
Turning to the question of bad faith, the hearing officer did not accept that the application reflected a decision to take advantage of the reputation of the LORD OF THE RINGS mark. Rather, it was far more likely that the applicant sought to register the mark as a variant of the LORD OF THE FRIES mark that its related entities had been using successfully for its own business for over 15 years.
The Lord of the Rings might not be the first book that comes to mind when confronted with the name LORD OF THE FRIES, given its closer phonetic similarity to the 1954 novel, Lord of the Flies. Middle-earth Enterprises argued that this similarity to Lord of the Flies would “trigger consumer curiosity and suggests that it could also be a play on the LORD OF THE RINGS mark”, but the hearing officer found this to be irrelevant to the question of bad faith.
Conclusion
The opposition certainly ended well for Lord of the Fries, with a costs order in their favour to boot. The decision shows that even the smallest brand can sometimes succeed against powerful trade mark owners, as long as they distinguish themselves from Sauron the Deceiver by pursuing a good trade mark strategy that isn’t likely to deceive or cause confusion.
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