“In considering Section 44 [of the Trade Marks Act of 1995), a key finding was that the phrase ‘Lord of the’ has a particular meaning, being ‘having power, authority or mastery over a particular domain,’ and that those domains are ‘essentially infinite, noting though the popular uses of the domains ‘flies’ as in the book, ‘dance’ as in the popular Irish dance company and ‘fries’ used by the Applicant and/or its related entities. Critically, the Delegate rejected the argument by the opponent that the phrase immediately brought to mind its ‘Lord of the Rings’ mark,” said Marina Olsen, a partner at Gadens in Sydney.

Middle-earth Enterprises argued that when looking at the overall impression of “Lord of the Rings” and “Lord of the,” the presence of the word “rings” in the former and its absence in the latter should be ignored. The court rejected this argument. “This finding was unsurprising given the word ‘rings’ is neither descriptive nor a minor stylistic variation,” Olsen remarked.

The U.S.-based company, formerly known as Tolkien Enterprises, also relied on Section 58 to show it had first used the mark in Australia for the same or similar goods. “It led to evidence of The Lord of the Rings franchise’s significant reputation in books, films and video games,” said Olsen. “However, the delegate held that the evidence of the franchise’s significant reputation in these areas did not extend to food products like those sold by Lord of the Fries. In doing so, the delegate demonstrated a determination not to allow Middle-earth Enterprises to use its very substantial reputation in respect of books and films to reach into areas where it does not have an equivalent reputation.”

According to Olsen, this is a reminder that trademark opponents must not merely rely on general brand recognition. Instead, they must be able to provide good evidence of reputation in respect of the relevant goods and services.

- Espie Angelica A. de Leon