Every now and then, we get the opportunity to report on an Australian IP judgment. In this article, we discuss the recent judgment in the trade mark case of Middle-earth Enterprises v Lord of the Fries Pty Ltd (2025) ATMO 48.
Lord of the Flies
Readers of a certain age will know the name William Golding as they were required to read the book Lord of the Flies when they were at school. The book was about a group of schoolboys who were stranded on a deserted island following a plane crash, and who, with time, started acting somewhat like savages.
Middle-earth Enterprises, LLC
This company has trade mark registrations in Australia for the term LORD OF THE RINGS in various classes covering swords, figurines, clothing, entertainment services, and one in class 30 for a range of sweets and confectionery-like foodstuffs.
Lord of the Fries IP Pty Ltd
This is an Australian fast food chain that seemingly started as a 'food from a truck' business but is now a significant chain with an entirely vegan menu. The company has done very well for itself, with nine Lord of the Fries outlets in Australia.
Lord of the Fries IP Pty Ltd applied for registration of the trade mark LORD OF THE, which was met with opposition from Middle-earth Enterprises based on their LORD OF THE RINGS trade marks. In rendering its decision, the Hearing Officer made the following findings:
Not substantially identical
In considering whether the marks were substantially identical, the Hearing Officer conducted a side-by-side comparison of the trade marks "LORD OF THE" and "LORD OF THE RINGS" and found that they were not substantially identical. The Hearing Officer stated that the absence of "RINGS" in the Applicant's mark created a "total impression of dissimilarity" and that the term "RINGS" is not descriptive and is an essential, distinctive feature of the "LORD OF THE RINGS" trade mark.
Lord of the...flies, fries, dance?
The Hearing Officer did not accept Middle-earth Enterprises' assertion that the phrase "LORD OF THE" immediately brings to mind "LORD OF THE RINGS". Instead, he said that the phrase ''lord of the'' has a meaning of having power, authority or mastery over a particular domain. The number of possible domains is essentially infinite, noting though the popular uses of the domain ''flies'' (as in Golding's book), ''dance'' (the popular Irish dance company) and ''fries'' (the use by the Applicant and/or related entities).'
Reputation
The Hearing Officer said that Middle-earth Enterprises has acquired a very significant reputation in Australia in the LORD OF THE RINGS trade mark, but that 'this reputation is limited to books, movies and video games ... and does not extend to foodstuffs in any way'.
Bad faith
The Hearing Officer was not persuaded that there had been any decision to take advantage of the LORD OF THE RINGS trade 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 business for over 15 years.'
So, there was no likelihood of consumer confusion, no evidence of dishonest intent and Middle-earth Enterprises' opposition was unsuccessful.
Some final words
The Hearing Officer's decision to dismiss all grounds of opposition (while ordering Middle-earth Enterprises to cover Lord of the Fries' legal costs) and allow the LORD OF THE trade mark to proceed to registration highlights the increasing scrutiny on expansive trade mark claims by trade mark holders.
This case highlights the importance of smaller businesses being able to establish and protect their own brand identity, even in the face of opposition from well-known entities. It also serves as a reminder that successful trade mark oppositions require robust evidence of reputation and a clear risk of consumer deception, rather than reliance on broad assertions of brand recognition.
*Reviewed by Rowan Forster, an Executive in ENS' Intellectual Property Department
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