A Quest Against Middle-earth: Lord of the Fries Successfully Registers LORD OF THE Mark
The intellectual property rights owner of The Lord of the Rings franchise, Middle-earth Enterprises, LLC (Middle-earth Enterprises) has renewed its pursuit against Lord of the Fries IP Pty Ltd (Lord of the Fries), having recently appealed the Australian Trade Marks Office’s decision allowing the registration of the word mark LORD OF THE filed by Lord of the Fries. We discuss below the key issues in dispute in the trade mark opposition filed by Middle-earth Enterprises.1
Lord of the Fries, a well-known Australian vegan fast-food chain, applied to register the word mark LORD OF THE in classes 29 and 30 for foodstuffs.
Middle-earth Enterprises opposed the LORD OF THE mark on multiple bases, including that the mark was deceptively similar to its LORD OF THE RINGS word mark registered in class 30. Middle-earth Enterprises also sought to rely on the reputation of its The Lord of the Rings franchise, alleging that registration of LORD OF THE as a trade mark would cause confusion, that the mark was registered in bad faith and that the trade mark is contrary to consumer law.2
This case highlights how the overall impression conveyed by the mark is central to the question of deceptive similarity—the fact that LORD OF THE was wholly incorporated in LORD OF THE RINGS was not determinative. The decision also reinforces how general brand recognition and reputation alone is not enough to create a blanket protection across all goods and services. The approach is consistent with other recent decisions of IP Australia.
LORD OF THE vs LORD OF THE RINGS—Not Substantially Identical or Deceptively Similar
An application must be rejected if the mark is substantially identical with or deceptively similar to an earlier registration in respect of similar goods or closely related services.
Adopting the well-accepted side-by-side analysis, the Delegate considered that LORD OF THE was not substantially identical to LORD OF THE RINGS. The absence of the term “rings,” which was an obvious essential feature of Middle-earth Enterprises’ mark, created a total impression of dissimilarity.
On the question of deceptive similarity, the Delegate affirmed that the reputation of LORD OF THE RINGS was not a relevant factor.3 Central to the finding against deceptive similarity was the meaning of the phrase “LORD OF THE.” At [34] the Delegate stated:
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 [Lord of the Fries]). It does not obviously bring to mind any particular domain, let alone ‘rings’.
THE LORD OF THE RINGS’ Reputation was not Enough
Middle-earth Enterprises produced extensive evidence relating to the significant and substantial reputation acquired in its THE LORD OF THE RINGS mark in Australia. However, the Delegate determined that such reputation was limited to books, movies and video games, and did not extend to foodstuffs (class 30). In fact, the only evidence of use provided by Middle-earth Enterprises in connection to foodstuffs in Australia was “a single marketing campaign to promote the movie series that took place approximately 20 years before the relevant date.”4
Accordingly, Middle-earth Enterprises sought to rely on the reputation and fame of LORD OF THE RINGS generally to support its argument of consumer confusion. Rejecting Middle-earth Enterprises’ contention, the Delegate considered that such an approach would implicitly afford the owner of a famous mark a monopoly far beyond the scope of the trade marks system.
Middle-earth Enterprises’ insufficient reputation in class 30 saw the Delegate find that consumer confusion was “highly unlikely to arise” in the present case, as there was “no realistic prospect” that a consumer faced with fries branded as LORD OF THE “would be caused to wonder if [Middle-earth Enterprises] had expanded into fast food.”5 The Delegate observed that “a sufficient degree of respect” must be afforded to the consuming public’s ability “to determine the difference between a piece of licensed intellectual property and an indicator of the source of their fast food.”6
The Delegate also considered and ultimately dismissed the opposition grounds relating to ownership, bad faith, and misleading and deceptive conduct.
We will have to wait and see what the Federal Court says.
By Rachelle Downie and Amber Meyer
Footnotes
1 Middle-earth Enterprises, LLC v LORD OF THE FRIES IP PTY LTD [2025] ATMO 48 (4 March 2025) (Middle-earth v LORD OF THE FRIES), accessible at https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2025/48.html.
2 see sections 42(b), 60 and 62A of the Trade Marks Act 1995 (Cth).
3 at [30]-[32] of Middle-earth v LORD OF THE FRIES, citing Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49].
4 at [49] of Middle-earth v LORD OF THE FRIES.
5 at [55] of Middle-earth v LORD OF THE FRIES.
6 at [55] of Middle-earth v LORD OF THE FRIES.