• Why a "Lord of the Wings" Trademark Could Confuse Consumers
  • March 20, 2015 | Authors: H. David Edinger; Raylene Smith
  • Law Firm: Singleton Urquhart LLP - Vancouver Office
  • The three volumes of J.R.R. Tolkien’s The Lord of the Rings were published in 1954-55. Thirteen years later the author sold the film, stage, and merchandising rights to United Artists Corporation and, in turn, that company sold them in 1976 to The Saul Zaentz Company, another movie production company. It took a further 25 years before the three live-action films were released in 2001-03; they earned over US$1 billion at the box office in North America and almost $3 billion worldwide.

    Not surprisingly the owner of such a valuable franchise sought protections for its intellectual property. In Canada, a number of The Lord of the Rings trademark applications have been registered, just some of the 1.2 million trademarks protected by the Trade-marks Act (Act) (the Government of Canada prefers to hyphenate “trade-marks”) and registered with the Canadian Intellectual Property Office (CIPO). These trademarks included one related to merchandise such as DVDs, CDs, chess sets and figurines. But one of those applications, filed in 2005, may strike some as anomalous since it pertained to beverages, including soft drinks, fruit juices, and smoothies. It was subsequently abandoned three years later.

    In July 2008, another corporation, Al Moudabber Food Concepts SAL, applied to CIPO for registration of a trademark, “Lord of the Wings”, in association with bar and restaurant services (including, presumably, chicken wings) and temporary accommodation. Al Moudabber had previously registered this trademark in Lebanon; it was not written in Elvish or runes or J.R.R. Tolkien’s distinctive spidery handwriting, but, instead, in thick block capitals between a pair of feathered wings.

    Despite the scarcity of chickens in The Lord of the Rings films, The Saul Zaentz Company was not amused. It opposed Al Moudabber’s registration of the “Lord of the Wings” trademark before the Trade-marks Opposition Board (TMOB), which rendered an interesting and entertaining decision in January 2013.

    The TMOB decision demonstrates both the limits of trademark rights and the challenges to creating a unique and powerful trademark. Many of the Zaentz Company's opposition arguments were built on sections of the Trade-marks Act, including Section 12(1)(d) which can prevent the registration of a trademark if it is “confusing with a registered trade-mark”.

    “Confusion” in this context has a specific meaning. Under Section 6(2) of the Act, a proposed trademark is “confusing” with an existing trademark where “the use of both trademarks in the same area [would likely lead a casual consumer] to the inference that the wares or services associated with those trademarks were manufactured, sold, leased, hired or performed by the same person . . . .”

    Three recent Supreme Court of Canada trademark cases discussing the meaning of “confusion” led the TMOB to ask whether the casual consumer would likely associate the use of the “Lord of the Wings” trademark with the Zaentz Company’s The Lord of the Rings trademarks.

    The TMOB carefully considered all the circumstances and the factors surrounding the two trademarks under Section 6(5) of the Act, which contains the following stipulations:

    (a) the inherent distinctiveness of the trade-marks or trade-names and the extent
    to which they have become known;
    (b) the length of time the trade-marks or trade-names have been in use;
    (c) the nature of the wares, services or business;
    (d) the nature of the trade; and
    (e) the degree of resemblance between the trade-marks or trade-names in
    appearance or sound or in the ideas suggested by them.

    The Zaentz Company’s affidavits contained serious defects because they essentially explained only how famous they believed their registered trademarks were—rather than how and to what extent they were used for wares and services in Canada. This may have been strategic since there may have been no good evidence available that their trademarks were used with bars and restaurants.

    The TMOB held that, notwithstanding the notoriety of the films, The Lord of the Rings trademarks were not used in association with bars, restaurants or temporary accommodation. It further held that it was unlikely consumers would consider a movie studio to be the source of such wares or services. The natures of the parties’ respective trades were too different.

    In other words, the TMOB held it unlikely that a casual customer would mistake a restaurant in Canada using the “Lord of the Wings” trademark as being affiliated with The Lord of the Rings films or The Saul Zaentz Company.

    However, The Saul Zaentz Company had filed its beverage trademark application in August 2005 and the “Lord of the Wings” application was based on the Lebanese trademark. This permitted the argument under Section 16(2)(b) of the Act that the “Lord of the Wings” was confusing with the Zaentz’s beverage trademark application—even though it had been abandoned after July 2008.

    The TMOB held that the abandonment was irrelevant under the Trade-marks Act. It also held that there was some resemblance between the marks and potential for overlap in the “nature of trade” since most bars and restaurants would serve the beverages listed in the beverage application. The onus was thus on the applicant to show there was no confusion—which Al Moudabber could not do.

    The TMOB rejected the “Lord of the Wings” application with respect to bar and restaurant services but allowed it for temporary accommodation. The applicant was thus left with a potentially weak trademark registration, given the narrow scope of the services for which it would be protected.

    Failure or inability to register a trademark may mean that a business can lose much of the time, cost and effort involved in building a strong name and brand. The TMOB may disallow the registration of a potential trademark. In other instances, a business’s registered trademark may not prevent registration of very similar trademarks. Companies can avoid such problems by creating distinctive business names, product names and branding, potentially with the assistance of a trademark agent’s or lawyer’s opinion concerning the scope of existing and pending trademark registrations. Most importantly, if a common-law or registered trademark holder believes it has suffered infringement by another person or business, or it wants to oppose an advertised registration by CIPO, it should consult a lawyer as soon as possible.