British restaurant threatens another British restaurant over its branding on ‘Taqueria’
from a-place-that-sells-tacos department
One of the cornerstones of trademark law in most countries is that you cannot register descriptive terms or words. The reason should be obvious. If I run a search engine and want to trademark my business name, calling it “Google” sets me apart from the rest of the market. But if I called my search engine “Search Engine” and then tried to file it, it would be rejected because trademark law is not supposed to prevent competitors from identifying their products.
This should also be the case with “taqueria”, which is a word that means “place that sells tacos”. And yet, it looks like the UK somehow allowed Worldwide Taqueria to register the word. Now this company is threatening another taqueria, Sonora Taqueria, simply to have that word in his name.
On September 6, Taqueria’s attorneys delivered a 20-page letter to the owners of Sonora. The letter, seen by Eater London, outlined the technical details of the alleged Taqueria trademark infringement, in addition to any instances of alleged infringement. It also provided recommendations for resolution, with a response deadline set for September 21.
In response to a request for comment on the letter to Sonora, Ismael Munoz, Chief Operating Officer of Taqueria, said: “As with all trade mark registrations in the UK, the provisions of the Trade Mark Act grant the owner exclusive right to the mark, and those rights are infringed when the mark is used in the UK by another business without the owner’s consent. As such, use of TAQUERIA by Sonora Taqueria Ltd without the consent of Worldwide Taqueria Ltd constitutes trademark infringement.
If this ends up going to a UK court and not mocking the courtroom, there should be pitchforks and torches ready for all the good tacos in England to walk on brand desks. This is absurd.
What is more likely, however, is that this threat issued by Worldwide Taqueria against a competitor will spark a petition to simply cancel the brand entirely. It should never have been granted in the first place. “Taqueria” is no less descriptive than “burger joint” or “pizzeria”. Granting a trademark on these terms not only defeats the whole purpose of trademark laws, but it would cause absolute chaos in the marketplace and the legal system.
The people of Sonora Taqueria look ready to fight.
“Basically the general feeling we’re getting is that it’s worth fighting for,” Napier said. From the first conversations with lawyers who contacted Sonora after the owners posted on their Instagram account last week, they were encouraged to learn a distinction, where, in Napier’s words, “if you have something protected by copyright, it must be non-descriptive and distinctive. And the use of the word “taqueria” is descriptive and not distinctive.
“For [Taqueria] it’s the name of a business, but to anyone else it’s descriptive. It describes what your business does. And it’s not distinctive, because there can be many taquerias, just as there can be many pizzerias. Taqueria copyrighted in 2004, when, says Napier, “I imagine there were very few places in the UK using the word ‘taqueria’. But now there are many.
Trademark and copyright confusion aside, this is all pretty much perfect. We often see courts and IPOs get it wrong, but this one has to be one of the easiest mark undo’s I’ve come across.
Filed Under: taqueria, brand, uk
Companies: sonora taqueria, global taqueria