Middle-earth Enterprises, LLC v Lord of the Fries IP Pty Ltd

[2024] ATMO 48

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Middle-earth Enterprises, LLC to registration of trade mark application 2298514 (29,30) – LORD OF THE – in the name of LORD OF THE FRIES IP PTY LTD

Delegate:	Nicholas Smith
Representation:	Opponent: Shauna Ross of Counsel, instructed by IP Solved (ANZ) Pty Ltd Applicant: Hall & Wilcox
Decision:	2024 ATMO 48 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Middle-earth Enterprises, LLC (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of LORD OF THE FRIES IP PTY LTD (‘Applicant’): 

Application Number:	2298514
Filing Date[1]:	6 September 2022
Goods:	Class 29: French fries; fried potatoes; fried potato chips; hand-cut fried potatoes; hand cut fried potatoes serviced in a cone and topped with international flavoured sauces; cooked vegetables and vegetable products including cooked or fried potatoes and potato products; processed and frozen vegetables and vegetable products including processed and frozen potatoes and potato products; potato crisps; meat; fish; chicken; mini-burgers; hash browns; egg burgers; breakfast burgers; breakfast burritos; milkshakes and malted milks; snack foods made from vegetables; snack foods made of meat and meat substitutes; prepared, cooked, frozen meals including those made of meat, fish, vegetables, cheese; vegan and plant based prepared meals and snacks; Vegan foods consisting predominantly of vegetables. Class 30: Sauces (condiments), salts, spices and seasoning blends; dry seasonings; seasoning marinades and mixes; preserved herbs; gravy and gravy mixes; marinades for meat, fish and vegetables; vinegar, sauces and other condiments; prepared meals containing pasta, rice or wheat; food dressings; cooking sauces; flavourings for snack foods; vegetable pastes, pulps and purees; rice, pasta and noodles; bread, pastry and confectionery; rice chips, processed quinoa; sandwiches; tacos; bread mixes; bread rolls; wraps made of flour or wheat; pitta bread; hamburgers; hamburger buns; beverages with a coffee, tea or chocolate base; chocolate biscuits; dairy ice cream; ice cream; doughnuts; doughnut mixes; prepared desserts; vegan bread, pasta, dressings, species, sauces, mixes and condiments. (‘Applicant’s Goods’)
Trade Mark:	LORD OF THE	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 19 April 2023.  The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 5 June 2023. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Fredrica Drotos, director, Licensing of the Opponent (‘Drotos 1’)	5 September 2023	FD-1 to FD-16
Evidence in answer
Samuel Koronczyk, Chief Operating Officer of the Applicant (‘Koronczyk declaration’)	11 December 2023	SK-1 to SK-20
Evidence in reply
Fredrica Drotos (‘Drotos 2’)	13 February 2024	FD-17 to FD-36

1. The entirety of the evidence filed by the Opponent, including publicly available information such as the existence of the Lord of the Rings film franchise or the decisions of the national trade mark registries, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.   

3. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 20 March 2024 the Applicant requested a hearing by video-conference.  The matter was set down for a hearing on 4 February 2025 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 4 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 21 January 2025 (‘Opponent’s Submissions’).  At the hearing Shauna Ross of Counsel represented the Opponent.  Notwithstanding that it initially requested the hearing, the Applicant chose not to appear or file written submissions.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

5. The Opponent is a United States company that holds relevant intellectual property rights (including worldwide motion picture, stage and merchandising rights, as well as various trademarks registered around the world) in connection with the novel/novels known as The Lord of the Rings, written by the British author J.R.R. Tolkien and later adapted into a number of successful movies.    

6. The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.

Number	Trade Mark	Priority Date	Goods or Services
887543	LORD OF THE RINGS	30 Aug 2001	Class 30: Confectionery; bakery goods and cereal-based products; flavourings for beverages; chocolate and cocoa-based beverages; jellies and ices, icecreams and edible ice blocks

1. The relevant claims/statements in Drotos 1 and 2 can be summarised as follows:

   ·     The Lord of the Rings is an epic fantasy novel written by J.R.R. Tolkien which is one of the most widely read and influential novels of all time.  It has received extraordinary levels of global sales and critical acclaim. From 2001 to 2003 three extraordinarily successful films based on the novel were released globally and in Australia which are among the highest grossing films of all time.  Each of these films received significant critical acclaim and employed a number of well-known Australian actors.

   ·     The Opponent has licensed the trade mark THE LORD OF THE RINGS for various merchandising purposes including board games, clothing, toys, foodstuffs and video games.

   ·     The Opponent has successfully opposed various trademark applications for marks similar to the Trade Mark around the world.

2. The exhibits to the Drotos 1 display various marketing material and evidence that confirm the reputation and success of the Lord of the Rings book and films.  Exhibits FD-14-16 consist of various additional examples of merchandising of THE LORD OF THE RINGS.  These exhibits do not include any examples of THE LORD OF THE RINGS being applied to foodstuffs (there is one reference to a ‘Lord of the Rings’ themed dinner).

3. The exhibits to Drotos 2, particularly FD-17 consist mostly of examples of successful oppositions to marks containing ‘lord of the’ in various jurisdictions around the world.  I note that none of the oppositions relate to marks identical to the Trade Mark itself, and indeed the majority of them relate to attempts to register the trade mark LORD OF THE WINGS, which I consider has a much greater visual and phonetic similarity (wings rhyming with rings) to the Opponent’s Trade Mark than the Trade Mark.

4. At Exhibit FD-36 to Drotos 2 the Opponent provides examples of licenced use of THE LORD OF THE RINGS in respect of food and beverages in Australia.  Ms Drotos provides no commentary on these examples but it is apparent that the examples referred to relate to a single set of promotions undertaken with Cadbury/Schweppes/Pepsi and Yum Brands in the early 2000s to promote the movie series.[3]  No evidence of sales or advertising spending is provided and, noting that the vast majority of promotional material also contains images or actors and scenes of the movie (as well as various marks owned by Cadbury/Schweppes/Pepsi), it is likely that consumers would not identify THE LORD OF THE RINGS mark as being used in connection with the origin of the labelled (for example) Cadbury Fruit & Nut bar that they were purchasing.  This exhibit also contains examples of licensed used of the mark for food and beverages outside Australia.  There is one example of what is said to be a collaboration between Yum Restaurants in Australia and the UK but no details are provided of this collaboration and it is not clear that the material exhibited was ever displayed in Australia.

   [3] The exhibit provides other examples of promotional use globally in respect of food and beverages.

   The Applicant

5. The Applicant is an Australian vegan fast-food chain that since 2004 has operated primarily under the name and trade mark ‘LORD OF THE FRIES’.    

6. The relevant claims/statements in the Koronczyk declaration can be summarised as follows:

   ·     The Applicant has offered goods under the LORD OF THE FRIES mark since 2004 and in 2022 sought to offer plant-based macaroni and cheese under the Trade Mark.

   ·     The Applicant has a distinct niche as a convenient, vegan fast food restaurant that operates in an entirely different reputation to that of the Opponent.

   ·     The Opponent does not have exclusive rights to ‘lord of the’ or phrases beginning with ‘lord of the’ and indeed there are many examples of use of similar marks such as Lord of the Pies, Lord of the Wings and Lord of the Dance,

7. The exhibits to the Koronczyk declaration display various material showing the Applicant’s use of its LORD OF THE FRIES mark and the Trade Mark as well as examples of use of and registration of marks containing the term ‘Lord of the’.   I note that the evidence of use of the Trade Mark is very limited and does not show use prior to 2022 or use other than in respect of its macaroni and cheese.

8. I note that the Applicant’s evidence is imprecisely drafted since it uses the term Applicant to refer to the applicant for the trade mark, being an IP holding company, and not a trading entity which operates the Lord of the Fries business.  This results in the Declarant making a number of obviously incorrect statements such as stating that the Applicant adopted the LORD OF THE FRIES mark in 2004 (10 years before the Applicant was incorporated).  Indeed, the first line of the declaration is ‘I am the Chief Operating Officer (COO) of Lord Of The Fries IP Pty Ltd (ACN 601 438 886) (Applicant), a position I have held since 2005’.  The Applicant was incorporated in 2014.

9. No attempt has been made to clarify this or properly set out the relationship between the various ‘Applicant entities’ or to indicate what use of the LORD OF THE FRIES mark and the Trade Mark was made by the Applicant compared to the trading entity.   This sort of basic error does not give confidence that the Applicant’s evidence was prepared or reviewed with sufficient care.  The Opponent properly raised a number of concerns with the Applicant’s evidence on the basis of the matters above, and while I entirely accept the Opponent’s concerns, I do not discard the Applicant’s evidence in its entirety, since the documentary material clearly indicates an entity related to the Applicant operating a business under the LORD OF THE FRIES mark since approximately 2004 in Australia and also shows certain very limited use of the Trade Mark.

   Grounds of Opposition, Onus and Standard of Proof

10. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

11. The onus of proof in an opposition rests upon the Opponent.[4]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[6]

    [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [5] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

    Section 44

12. The relevant provisions of s 44 are reproduced below:

    Section 44 - Identical etc. trade marks

    (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

    (a)it is substantially identical with, or deceptively similar to:

    (i)     a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)   a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1: For deceptively similar see section 10.
    Note 2: For similar goods see subsection 14(1).

    (2)…

    (3)If the Registrar in either case is satisfied:

    (a)that there has been honest concurrent use of the 2 trade marks; or

    (b)that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

    Note:  For limitations see section 6.

    (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)            the similar goods or closely related services; or

    (ii)           the similar services or closely related goods; and

    (b)ending on the priority date for the registration of the applicant's trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
    Note 2: For predecessor in title see section 6.
    Note 3: For priority date see section 12.

    Section 10 - Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

13. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

14. In the event that each of these requirements is satisfied by the Opponent it may still be possible for me to allow the application to proceed to registration if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. 

15. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which has a priority date that is earlier than the priority date of the Trade Mark.  In addition the Opponent’s Trade Mark is registered for ‘bakery goods and cereal based products’ which encompasses a portion of the class 30 goods for which the Trade Mark is sought to be registered for, namely ‘bread, pastry and confectionery; sandwiches; bread mixes; bread rolls; wraps made of flour or wheat; pitta bread; hamburger buns; chocolate biscuits; doughnuts; doughnut mixes; prepared desserts; vegan bread’.  The third requirement is satisfied with respect of the subset of the goods outlined above.  Given my finding below as to substantial identity and deceptive similarity it is not necessary to consider the Opponent’s other submissions with respect to certain other goods that are sought to be registered by the Applicant.

    Substantially identical and/or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

   [7] [1963] HCA 66, [12].

2. The Trade Mark and the Opponent’s Trade Mark are set out below:

   LORD OF THE             

   LORD OF THE RINGS

3. On a side-by-side comparison there is a clear difference, being the absence of the ‘rings’ element which means that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark.  I reject the submission by the Opponent that the presence of ‘rings’ must somehow be discounted in determining the total impression of resemblance or dissimilarity emerges. In some of the decided cases, the addition, substitution or subtraction of words and elements have been discounted for the purposes of substantive identity. These differing elements are, however, typically either descriptive of the goods and services or minor stylisations. As such, this does not extend to a finding that LORD OF THE RINGS and LORD OF THE are substantially identical.  The term ‘rings’ is not descriptive and is an obvious essential feature of the Opponent’s Trade Mark, being the item that the term ‘LORD OF THE’ modifies.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

4. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[8]

   [8] Ibid [13].

5. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[10] as follows:

   [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

   [10] [2023] FCA 482, [55] (Jackman J).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

   [11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

   [12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[13]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

   [13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [14] Ibid.

   [15] Ibid.

   [16] Swancom (n 11), [70], [77]-[80].

   [17] Shell (n 7), [12].

   [18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   [19] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

   [21] Australian Woollen Mills Ltd (n 13), 658.

   [22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills (n 13), 657.

6. Furthermore the High Court, in the same case, noted the following[23]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[24]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[25], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[26]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[27]

   [23] Self Care (n 9), [33].

   [24] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J) (‘New South Wales Dairy’), approved in C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ) (‘Henschke’), Hashtag Burgers (n 22), [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2022) 168 IPR 42, [73] (‘Jazz Corner Hotel’).

   [25] Act, s 68.

   [26] New South Wales Dairy (n 24), 589.

   [27] Jazz Corner Hotel , 59 [89]. See also Henschke (n 24), 62 [44].

7. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[28]  Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[29]

   [28] See Swancom (n 11), [93] and, albeit in the s120(1) context Self Care (n 9), [49].

   [29] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

8. Justice French expressed the view in Woolworths[30] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[31]

   [30] Woolworths (n 20), [39].

   [31] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

9. The Opponent’s Submissions make the assertion that the phrase LORD OF THE (being the Trade Mark) immediately brings to mind the Opponent’s Trade Mark.  Noting that the reputation of the Opponent’s Trade Mark is not a relevant factor I do not accept this submission and I find that the marks are not deceptively similar.   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 the Applicant and/or its related entities).  It does not obviously bring to mind any particular domain, let alone ‘rings’.

10. The conceptual meaning of the Trade Mark is therefore the abstract concept of power or dominance over a domain.  The nature of the domain is uncertain and the viewer is left to question what domain the Trade Mark is referring to.  The conceptual meaning of the Opponent’s Trade Mark is entirely different, being the holding of power or dominance over ‘the rings’.  In essence, the focus of the Opponent’s Trade Mark is ‘the rings’ while the Trade Mark’s focus is the concept of power or dominance.  Given the significant conceptual differences between the marks and the strong focus on the ‘rings’ element in the Opponent’s Trade Mark I find that notwithstanding that the Opponent’s Trade Mark wholly incorporates the Trade Mark, the Opponent’s Trade Mark conveys an overall conceptual meaning sufficiently different the Trade Mark contained within it, such that the trade marks are not deceptively similar.  This was found to be the case in, for example, REBELLION vs SOUL REBELLION[32] and JOCKEY vs THROTTLE JOCKEY.[33] 

    [32] Kingsley v Scott [2011] ATMO 20.

    [33] Jockey International Inc v Wilkinson [2010] ATMO 22.

11. Finally, I reject the arguments made by the Opponent that the actions of the Applicant amount to a deliberate attempt to cause confusion or deception.  I discuss this further under the s 62A ground, but in summary the Opponent holds no reputation in the Opponent’s Trade Mark for the Opponent’s Goods in Australia, there is an obvious reason for the application (the mark being a modification of the LORD OF THE FRIES mark the Applicant or its related entities has traded under for over 15 years) and the evidence in support of the Opponent’s contentions is essentially negligible.

12. I find that the Opponent has failed to establish the ground of opposition under s 44.

    Section 58

13. Section 58 is reproduced below:

    Section 58. Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

14. The first owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia (while having an intention to use the applied-for mark), whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[34]

    · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[35] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[36]

    [34] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

    [35] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

    [36] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

15. The ground based on s 58 was particularised in the SGP as follows:

    The Opponent has used and promoted the Lord of the Rings Trade Mark extensively in Australia and around the world before the priority date of the Opposed Trade Mark in Australia. The Lord of the Rings Trade Mark has been continuously used and promoted in Australia before the priority date of the Opposed Trade Mark in respect of the same or similar goods.  Accordingly the Applicant is not the owner of the mark.  

16. As I have found, in paragraph 26 above, that the Opponent’s Trade Mark and the Trade Mark are not substantially identical, the first factor is not established. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

    Section 60

17. Section 60 is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

18. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

19. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[37]

    [37] [2023] FCA 487, [20]-[21] (Kennett J).

20. In McCormick & Co Inc v McCormick[38], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[39]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[40]

    [38] [2000] FCA 1335 (‘McCormick’).

    [39] Ibid, [81].

    [40] (1992) 33 FCR 302, 343.

21. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[41]

    [41] (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

22. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[42] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[43]

    [42] [2000] FCA 1587.

    [43] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

1. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The trade mark/s have been used before the priority date of the trade mark being opposed.

   The Opposed Trade Mark is similar to the Lord of the Rings Trade Mark which has acquired a significant reputation in Australia and around the world prior to the priority date of the Opposed Trade Mark and because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

   The Opponent has used, registered and applied to register numerous trade marks derived from the iconic and notorious The Hobbit and The Lord of the Rings books and movies.  Among the Trade Marks owned by the Opponent is the famous mark LORD OF THE RINGS, which is the name of the well-known and iconic trilogy of books and motion pictures based on the literary works of J.R.R. Tolkein, and central to the mythos of The Hobbit & The Lord of the Rings works and in the motion pictures based on those works.

   The Lord of the Rings Trade Mark is a world famous name that is exclusively associated with the Opponent.  The Opponent is the owner of the Lord of the Rings Trade Mark in Australia and in many other jurisdictions around the world.  The Lord of the Rings Trade Mark has been extensively marketed and promoted by the Opponent both in Australia and around the world.

   The Lord of the Rings Trade Mark has been continuously used in connection with a broad variety of goods and/or services.  The Lord of the Rings Trade Mark has been licensed around the world, including Australia.   At the filing date of the Opposed Trade Mark, the Lord of the Rings Trade Mark has become an essential part of the indicia derived from the names of persons, places and things described in the highly popular and iconic series of Hobbit and the Lord of the Rings books and movies and has acquired a substantial  reputation in Australia and worldwide.

   Given the significant and substantial reputation in the Lord of the Rings Trade Mark in Australia and around the world and the number of people who associate the Lord of the Rings Trade Mark with the Opponent, it is likely that consumers who see the goods branded, promoted with or under the Opposed Trade Mark would be likely to be deceived or confused that such goods were provided by the Opponent or that there was some association or connection between such goods and the Opponent.

   Accordingly, any use of the Opposed Trade Mark is likely to deceive and cause confusion. 

2. I am satisfied that the Opponent has acquired a very significant reputation in Australia in THE LORD OF THE RINGS mark and/or Opponent’s Trade Mark, sufficient for the requirements under s 60(a).  However, this reputation is limited to books, movies and video games, where the evidence of use is extensive.  I note that this reputation does not extend to foodstuffs in any way and the only evidence of use in connection to foodstuffs in Australia is a single marketing campaign to promote the movie series that took place approximately 20 years before the relevant date.

3. It is not sufficient that the Opponent merely establish that its trade marks had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.  Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[44]

   [44] Australian Woolen Mills (n 11), 658.

4. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[45]

   [45] Woolworths (n 20), [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross (n 6), 594-5.

5. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[46]

   [46] [2012] ATMO 124, [40] (Hearing Officer Thompson).

6. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[47]

   [47] [2016] FCA 729, [142] (Yates J).

7. Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[48]  For clarity, notional use does not include theoretical examples of use speculated by a party to suggest the possibility of confusion should a mark be used in a particular (but unlikely) way (such as adopting a particular mark or get up, or in the current case, in combination with the descriptive words ‘onion rings’ to create LORD OF THE ONION RINGS).

   [48] See, for example, McCormick (n 38) where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

8. In the present case I consider that confusion is highly unlikely to arise.  I refer to my reasons in paragraphs 34 to 36 relating to deceptive similarity.  Furthermore, the Applicant’s Goods are entirely different to the intellectual property that the THE LORD OF THE RINGS mark and/or Opponent’s Trade Mark has a reputation in.  There is no realistic prospect that a consumer, when faced with, for example, a set of french fries branded with the Trade Mark, would be caused to wonder if the Opponent had expanded into the field of fast food (noting that this is distinct from the possibility of licensing its existing and well-known THE LORD OF THE RINGS mark and/or Opponent’s Trade Mark).  I do not accept the Opponent’s implicit submissions that consumer confusion will arise when a ‘lord of the’ formative mark is applied to any product that could be merchandised by the Applicant, an owner of intellectual property. Such an analysis implicitly affords the Opponent a monopoly far beyond the scope of the trade marks system and does not provide the consuming public with a sufficient degree of respect for their ability to determine the difference between a piece of licensed intellectual property and an indicator of the source of their fast food.  

9. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

10. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

11. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[49]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[50]

    [49] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [50] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

12. The Opponent has particularised the ground of opposition in the SGP as follows: 

    Competition and Consumer Act 2010 (Cth).

13. I assume from the submissions that the Opponent in the SGP refers to ss 18 and 29 of the Australian Consumer Law (‘ACL’). As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[51] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [51] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

14. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[52], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[53] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.

    [52] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [53] [2003] FCA 104, [107] (Beaumont J).

15. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

16. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

17. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

18. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[54]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[55]

    [54] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [55] [2012] FCA 81, [147].

19. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[56]

    [56] Ibid [165]-[166].

20. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Opponent repeats the particulars provided under the Section 60 ground of opposition set out above.

    The Opponent has significant and extensive goodwill and reputation in the Lord of the Rings Trade Mark.  As an ubiquitous and essential part of the indica of the Opponent’s famous Lord of the Rings and The Hobbit books movies and trade marks, the Lord of the Rings Trade Mark is inextricably linked with the Opponent in the minds of Australian consumers.

    Due to the fame and popularity of The Hobbit and The Lord of the Rings books and movies, and the collateral products and services sold under the Lord of the Rings and Hobbit trade marks, at the time of adopting the Opposed Trade Mark and filing the Opposed Trade Mark application, the Applicant had full knowledge of the ubiquitous and world famous Lord of the Rings Trade Mark and of the Opponent’s rights in the Lord of the Rings Trade Mark.

    Upon information and belief, the Applicant has applied for the Trade Mark to gain a benefit by suggesting an association or connection with the iconic, famous and well-known indicia derived from the names of persons, places and things described in the highly popular series of Hobbit and the Lord of the Rings books and moves, where in fact no commercial association exists.

    The making of the application therefor indicates bad faith.

21. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[57]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark (which is a variant of a mark it or its related entities have traded under for over 15 years) was a decision to take advantage of the reputation the Opponent has in the Lord of the Rings mark (notably in an entirely different industry). It is far more likely that the Applicant seeks to register and using the Trade Mark as a variant of the LORD OF THE FRIES mark its related entities have been using successfully for its own business for over 15 years.  While I accept that, at the time the Applicant coined the Trade Mark, it was aware of the Opponent’s intellectual property (which is incredibly well-known), it also bears repeating here that ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith.’ [58] 

    [57] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

    [58] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

22. The Opponent seeks to make much of the fact that the Applicant’s (or the Applicant’s related entity’s) decision in 2004 to adopt its LORD OF THE FRIES mark was a play on the well-known book ‘Lord of the Flies’ to trigger consumer curiosity and suggests that it could also be a play on the LORD OF THE RINGS mark.  This appears to be irrelevant to the question before me, being the state of mind of the Applicant when it chose to apply to register the Trade Mark, being a variant of its existing mark that it had traded under for over 15 years.  Equally the examples cited in the Opponent’s Submissions supposedly showing a deliberate attempt to capitalise on the confusion between the LORD OF THE FRIES and Opponent’s Trade Mark (by, for example, showing posters where the ‘of the' elements are de-emphasised in both marks) are cherry-picked, display common design choices used in marketing, and would not in any way result in confusion between the marks; indeed (to recall the substantial identity discussion above) they operate to emphasise the prominence of the ‘Rings’ element in the Opponent’s Trade Mark. 

23. In circumstances where the evidence in support of the s 62A ground of opposition is essentially speculative and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character.  Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision and Costs

24. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2298514 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

25. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    4 March 2024