One does not simply infringe Middle-earth Enterprises

It has been reported over the weekend that a Brighton refuse firm Lord of the Bins has received a cease and desist letter from lawyers of Middle-earth Enterprises, owners of the rights to the hugely popular The Lord of the Rings trilogy. 

Middle-earth Enterprises have allegedly requested that Lord of the Bins change their name, website, and their slogan - “One ring to remove it all”. The Guardian reports that the letter states Lord of the Bins have "made use of names and slogan highly similar to the Lord of the Rings. Your activity amounts to an infringement of our client’s trademark rights". 

The owners of Lord of the Bins have hit back on Instagram, claiming "anyone in their right mind know we’re a completely separate and non-competitive business". However, in the same post they concede that "we now have the prospect of spending thousands of pounds and effort rebranding". 

It is deeply unfortunate that a small business has found itself in such a position - facing either a costly legal battle or rebranding exercise. However, Middle-earth Enterprises will have invested significant amounts of money and time into cultivating a valuable brand that they now wish to defend from dilution or appropriation. It would be hard for anyone to deny that The Lord of the Rings brand enjoys a huge reputation in the UK, and the UK Trade Marks Act 1994 provides at Section 10(3) that: 

A person infringes a registered trade mark if he uses in the course of trade... a sign which...is ... similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Additionally and in light of the presumably extensive goodwill consumers have in Tolkien's works, it appears highly likely Middle-earth Enterprises could also or alternatively demonstrate unregistered rights in the THE LORD OF THE RINGS trade mark and challenge Lord of the Bins under the common law tort of Passing Off.

The key takeaway from this story is the importance of clearing your business' trade marks before investing heavily in their use - they are, after all, precious.