You shall not pass…
. . . yourself off as Tolkien- related, estate tells food truck owner. Shannon Pitman reports
The owner of a food truck who hoped to call it “Lord of the Wings” has been turned down by the Intellectual Property Office after the owner of the Tolkien estate’s rights objected to the name.
Middle- Earth Enterprises trademarked the renowned Lord of the Rings series because the classic book, written by J. R. R. Tolkien and released in 1954, comes with significant cultural and economic benefits, particularly in New Zealand.
Since 1976, The Saul Zaentz Company Inc ( SZC) has owned the global merchandising rights to Tolkien’s works, licensing them for film production in 1998, leading to the blockbuster Lord of the Rings trilogy directed by Sir Peter Jackson.
The films, shot in 150 locations across New Zealand more than 20 years ago, contributed to a boom in tourism, with up to 6 per cent of visitors citing the franchise as their reason for travelling to the country, injecting an estimated $ 630 million into the New Zealand economy.
In June 2021, Jesse Holmes sought to register Lord of the Wings as a trademark for a food truck, separate from the global food chain Lord of the Wings, whose closest restaurant to New Zealand is in Australia.
The application was examined by the Intellectual Property Office of New Zealand ( Iponz), which did not raise any objections.
It was accepted for registration and then advertised for opposition purposes in July 2021, prompting a challenge from SZC.
Holmes told NZME his plan was to launch a food truck that would specialise in wings and the use of the word “lord” was in reference to someone of noble rank or top class.
“Top- class wings, Lord of the Wings was catchy and it had nothing to do with The Lord of the Rings, that’s for sure,” Holmes said.
But SZC submitted to the Iponz that Holmes likely chose the name to draw on and relate to the Lord of the Rings franchise.
Although it could not be determined where the food truck intended to be located, the address filed on the application was in the Canterbury region and Holmes was from Christchurch.
In Iponz’s recently released decision, Ruvini Rendle, assistant commissioner of trademarks, agreed with the Tolkien franchise that the marks for the branding were too similar.
“I consider that use of Lord of the Wings by the applicant is likely to cause a substantial number of persons in the relevant market to wonder whether the Lord of the Wings mark applied in relation to the provision of food and drink services is connected or associated with the opponent,” the decision said.
“The level of similarity required to prohibit registration can be enough to tie brands together, sparking a connection in the minds of consumers.
“I direct that Lord of the Wings should not be registered, subject to the outcome of any appeal of this decision.”
Holmes said he was disappointed with the ruling but could not afford to compete with the legal team representing the Tolkien franchise.
He believed the Lord of the Wings chain had successfully used the trademark due to its location.
“[ Tolkien estate] haven’t challenged it. I think the problem is that we are in New Zealand,” he said, referring to the Lord of the Rings connection to New Zealand.
He intends to apply for a new but similar trademark in the new year.
“Instead of Lord of ‘ the’ Wings, we’re probably going to go Lord of ‘ tha’ Wings, or Lord of ‘ da’ Wings.
“I imagine they’ll still object again but I don’t think they’ll be as successful.”
Holmes isn’t the only New Zealand business owner to tangle with international giants over naming rights.
In 1990 the owners of a Palmerston North motel, Henry and Brenda Harrod, were ordered to stop trading as Harrods after a four- year battle with the London- based department- store chain, according to Stuff.
Two years later, three New Zealand motels ran up against the Hilton Hotel chain, one of which got around the issue by changing its name to Formerly the Blackball Hilton.
In 2002, a Wa ¯ naka liquor store was threatened with legal action by renowned US drug and alcohol treatment clinic the Betty Ford Centre for its planned use of the same name, Betty Ford Liquor.