Each year thousands of tourists come to New Zealand to visit some of the 150 various locations where the famous Lord of the Rings films were filmed. Against this background, Jesse Holmes (Holmes) applied to register the trade mark LORD OF THE WINGS in relation to various food and drink hospitality and catering services in class 43.
Middle-Earth Enterprises, LLC (Middle-Earth) opposed its registration successfully, in part due to its reputation in the trade marks LORD OF THE RINGS/THE LORD OF THE RINGS, in Jesse Holmes v Middle-earth Enterprises, LLC [2023] NZIPOTM 52 (15 December 2023)
Who is Middle-Earth?
Middle-Earth is the owner of all trade mark rights associated with J.R.R. Tolkien’s novels, The Hobbit and The Lord of the Rings. In 1976 the Saul Zaentz Company Inc. acquired the worldwide motion picture stage and merchandising rights to the Tolkien works, subsequently licensing rights to produce the films based upon the Tolkien works to New Line Cinema in 1998. Sir Peter Jackson was appointed as Director of The Lord of the Rings films, and proceeded to make those films in Aotearoa New Zealand in 1999/2000 to critical worldwide acclaim.
Saul Zaentz Company Inc became aware of Mr Holmes’ application to register LORD OF THE WINGS in class 43 and opposed its registration. In November 2023 Saul Zaentz Company advised IPONZ that all relevant trade mark rights and interests will be invested in Middle-Earth.
Middle Earth has subsequently provided extensive guidelines and information to anyone who may be tempted provide goods or services branded with direct or “inspired” references the various characters, names, quotes and imagery associated with The Lord of the Rings/The Hobbit novels and films, at https://www.middleearth.com/.
Middle-Earth’s opposition succeeds, using New Zealand’s “reverse onus” opposition ground
Middle-Earth succeeded in its trade mark opposition, establishing that Holmes’ use of the trade mark LORD OF THE WINGS would be likely to deceive or confuse. In so doing it demonstrates to brand owners once again exactly how New Zealand’s “reverse onus” opposition ground[1] actually works.
Essentially, section 17(1)(a) prohibits registration of a trade mark if its use would be likely to deceive or cause confusion. However, the way that this is interpreted in New Zealand is somewhat unusual. Specifically, despite almost always being lorded as a section to protect the public from deception/confusion and not to protect the proprietary rights of third parties, its interpretation in often favors brand owners over trade mark Applicant’s in New Zealand trade mark oppositions.
How does the “reverse onus” ground work?
The aforementioned section is deceptively simple. However in practice, it means that a brand owner need only establish an “awareness” in its brand in New Zealand for any goods or services, which is much less than that which may be required to establish that a mark is well known . Once this awareness is established it is up to the Applicant to prove a negative – that is, that its use of the trade mark for the goods or services covered by the trade mark application will not deceive or confuse.
In this case, Middle-Earth had little difficulty in establishing awareness in New Zealand of the trade mark (The) LORD OF THE RINGS, particularly as they were filmed in 150 different locations across New Zealand. Middle-Earth also provided evidence that approximately 1-6% of all visitors to New Zealand site the Lord of the Rings films as their main reason for visiting the country.
Once Middle Earth established awareness in its LORD OF THE RINGS brand in New Zealand, the Assistant Commissioner concluded that many people in the take-away food and hospitality markets would wonder whether the LORD OF THE WINGS mark is connected or associated with Middle-Earth, due to similarities between the respective trade marks LORD OF THE WINGS/RINGS. This is in spite of Middle Earth failing to establish any reputation specifically in relation to use of its trade mark THE LORD OF THE RINGS in relation to food and drink/hospitality,
Warnings to foreign brand owners on evidence
Costs were awarded to Middle-Earth and against the Applicant as the successful party. However, Assistant Commissioner Rendle discounted the standard costs by 15% as he considered that Middle-Earth “filed a substantial amount of insufficiently tailored, irrelevant and inadmissible evidence”, which has increased the time required to determine this matter.
This evidence included numerous articles from international media such as Forbes, Time Magazine, New York Times, Variety magazine etc. regarding attention given to The Lord of the Rings films, without supporting evidence regarding New Zealand readership or engagement. Furthermore, evidence was lodged which was considered to be statements of opinion or inadmissible hearsay evidence.
The Assistant Commissioner’s mild criticism of that evidence continues the long-standing warning issued by New Zealand Assistant Commissioners in relation to quality of evidence. It appears reasonably common in New Zealand opposition proceedings for the owners of well-known international trade marks to file a significant volume of evidence in New Zealand opposition proceedings, when decisions confirm that evidence must be targeted to rights subsisting in Aotearoa New Zealand.
Brand owners are encouraged to work with local counsel to restrict the evidence which is filed in New Zealand oppositions. To paraphrase Gandalf, “true (IP) courage is about knowing not when to lodge evidence but when to spare evidence”.
[1] Section 17(1)(a), Trade Marks Act 2002