Lord of the Wings trade mark refused in Middle-earth

• Published date: 29 February 2024
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Spruson & Ferguson
• Author: Ms Roseanne Mannion and Chelsea Peters

Since the release of The Lord of the Rings film franchise in 2001, New Zealand has been synonymous with "Middle-earth". New Zealand tourism and traders jumped on the Tolkien bandwagon and 20 years later the demand for The Lord of the Rings goods and services remains hotter than the fires of Mount Doom.

Middle-Earth Enterprises, LLC is the owner of various intellectual property rights derived from or associated with the works of J.R.R Tolkien, including New Zealand trade mark registrations for THE LORD OF THE RINGS amongst others.

In June 2001, food truck owner Jesse Holmes applied to register the trade mark LORD OF THE WINGS in Class 43 for the provision of food and drink. But one does not simply make unauthorised references to the Tolkien works, and the application was opposed in October 2021.

The key ground of opposition was Section 17(1)(a) of the Act, namely, due to the prior awareness...