Lord of the Wings trade mark refused in Middle-earth


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 2021, 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, knowledge, cognisance or reputation of Middle-Earth Enterprises’ marks, use of the LORD OF THE WINGS mark by Mr Holmes would be likely to deceive or cause confusion.

In his counterstatement, Mr Holmes acknowledged that Middle-Earth Enterprises is the owner of the trade marks derived from and associated with the works of J.R.R. Tolkien but denied that the LORD OF THE WINGS mark is confusingly similar to THE LORD OF THE RINGS marks. Mr Holmes also denied that use of the LORD OF THE WINGS mark would present any connection between himself and Middle-Earth Enterprises’ services to the public, or that use of LORD OF THE WINGS would be likely to prejudice the interests of Middle-Earth Enterprises.

Similarity of the marks

When comparing the look and sound of the marks, the Assistance Commissioner, taking into account the principal that it is not the differences between two marks but the similarities that are most significant, determined that the shared components LORD OF THE and the shared ending of the last word (RINGS / WINGS) favours a finding that the marks are similar visually and aurally. Furthermore, given the awareness of the Tolkien works and the Lord of the Rings films, LORD OF THE WINGS is likely to be perceived as a play on THE LORD OF THE RINGS title whilst alluding to the provision of food comprised of chicken wings.

Similarity of the services

The Assistant Commissioner notes that awareness of THE LORD OF THE RINGS marks is primarily in relation to the novels and films, and Middle-Earth Enterprises provided little evidence on which to base a finding that there is awareness of THE LORD OF THE RINGS in relation to food and beverage services. However, this was not fatal to Middle-Earth Enterprises’ case because Section 17(1)(a) is concerned with public confusion resulting from use of the applicant’s mark, regardless of whether the goods and services of the parties are the same, similar, or completely different.


The Assistant Commissioner formed the view that use of the LORD OF THE WINGS trade mark for the provision of food and drink is likely to cause consumers to wonder whether LORD OF THE WINGS is connected or associated with Middle-Earth Enterprises, and registration of the trade mark was refused.

On the issue of costs, the Assistant Commissioner notes that Middle-Earth Enterprises filed a substantial amount of insufficiently tailored, irrelevant and inadmissible evidence and ordered a reduction in the costs award by 15%.

Key take-away from this decision for brand owners include:

  • in order to establish a likelihood of deception or confusion for the purposes of Section 17(1)(a), it is not necessary for the goods and services to be the same or similar. Awareness in the mark may result from use on entirely unrelated goods and services;
  • ensure that evidence is relevant, admissible, and tailored to the matter at hand to avoid a costs penalty; and
  • exercise caution when drawing inspiration from popular culture, and avoid making unauthorised references to, or associations with, the brands and reputation of other traders.

Read the full decision: Jesse Holmes v Middle-earth Enterprises, LLC [2023] NZIPOTM 52 (15 December 2023)

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