It turns out the words “Lord of the” are … precious cargo. But even if you have the one enterprise to rule them all, it does not stop others from using the phrase.
This week, Australian vegan hamburger chain Lord of the Fries defeated the rights holder of the Lord of the Rings book and screen franchise in a dispute over the three words they both share in their name.
A Lord of the Fries outlet at Melbourne’s Southern Cross Station.Credit: Paul Rovere
US-based company Middle-earth Enterprises LLC, formerly known as Tolkien Enterprises, contested an application by the Melbourne-based fast food company to trademark the words “Lord of the”.
In its bid to block the fast food chain using the phrase, Middle-earth Enterprises noted that it had previously defeated other attempts to trademark business names with “Lord of the”, including Lord of the Wings, which Trade Marks registrar delegate Nicholas Smith said in his ruling had “a much greater visual and phonetic similarity” than Lord of the Fries.
In Australia, disputes over intellectual property such as business names are decided under the 1995 Trade Marks Act.
The Lord of the Fries decision was made by the registrar of trademarks within the federal government agency IP Australia.
Middle-earth Enterprises holds the intellectual property rights and merchandising rights to the epic fantasy novels known as The Lord of the Rings by British author J.R.R. Tolkien.
As well as the hugely successful movies of the early 2000s, The Lord of the Rings is licensed for board games, clothing, toys, foods and video games, among other things, Middle-earth Enterprises said.
Lord of the Fries opened in 2004 and has, according to its defence, a “distinct niche as a convenient, vegan fast food restaurant that operates in an entirely different reputation” to that of Middle-earth Enterprises.
There are, the fast food chain points out, “many examples of use of similar marks” including Lord of the Pies and Lord of the Dance.
In his judgment, Smith noted that Middle-earth sought to “make much of the fact that the decision in 2004 to adopt Lord of the Fries was a play on William Golding’s classic 1954 novel Lord of the Flies to trigger consumer curiosity and suggests that it could also be a play on Lord of the Rings”.
He said this was irrelevant as Lord of the Fries was a variation of a trademark the business had used for 15 years, and also that Middle-earth had cherry-picked evidence suggesting the burger chain made deliberate design choices to capitalise on the similarity between the two.
Lord of the Fries and Middle-earth Enterprises have been contacted for comment.
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