Tech Dirt reports
One of the cornerstones of trademark law in most countries is that you cannot trademark descriptive terms or words. The reason for this should be obvious. If I start a search engine and want to trademark my company name, calling it “Google” differentiates me from the rest of the market. But if I named my search engine “Search Engine” and then tried to trademark that, it would be rejected because trademark law isn’t meant to preclude competitors from identifying what their products are.
So, too, should be the case with “taqueria”, which is a word that means “place that sells tacos.” And, yet, it appears that the UK somehow allowed Worldwide Taqueria to register the word. Now that company is threatening another taqueria, Sonora Taqueria, simply for having that word in its name.
On 6 September, lawyers on behalf of Taqueria served Sonora’s owners with a 20-page letter. The letter, seen by Eater London, outlined the technicalities of the alleged infringement of Taqueria’s trade mark, in addition to all instances of the alleged infringement. It also provided recommendations for resolution, with a deadline for a response of 21 September.
In response to a request for comment on the letter issued to Sonora, Ismael Munoz, Taqueria’s operations manager said that, “As with all UK trademark registrations, the provisions of the Trademarks Act grant the proprietor the exclusive right to the trade mark, and those rights are infringed when the trade mark is used in the UK by another undertaking without the proprietor’s consent. As such, Sonora Taqueria Ltd’s use of TAQUERIA without Worldwide Taqueria Ltd’s consent constitutes trademark infringement.
If this ends up going to UK court and doesn’t get laughed out of the courtroom, there should be pitchforks and torches prepped for all the good taco-loving people of England to march on the trademark offices. This is absurd.
What is more likely, though, is that this threat Worldwide Taqueria lobbed at a competitor will spur a petition to simply cancel the mark entirely. It never should have been granted in the first place. “Taqueria” is no less descriptive than “burger joint” or “pizza parlor”. Granting a trademark on those terms is not only against the entire point of trademark laws in the first place, but it would cause absolute chaos in the market and court system.
The folks at Sonora Taqueria appear to be ready to fight.
“Basically, the general feeling we’re getting has been that it’s worth fighting it,” Napier said. From early conversations with lawyers who contacted Sonora after the owners posted to their Instagram account last week, they’ve been encouraged to learn of a distinction, where, in Napier’s words, “if you copyright something, it has to be non-descriptive and distinctive. And the use of the word ‘taqueria’ is descriptive and non-distinctive.
“For [Taqueria] it’s the name of a company, but for anybody else, it’s descriptive. It’s describing what your company does. And it’s not distinctive, because there can be many taquerias, just as there can be many pizzerias.” Taqueria filed its copyright in 2004, when, Napier says, “I imagine that were very few places in the U.K. using the word ‘taqueria’. But now there’s lots of them.”
Other than the conflation of trademark and copyright, that is all pretty much spot on. We see courts and IP offices get things wrong often, but this one has to be one of the easiest trademark cancellations I’ve come across.
UK Restaurant Threatens Other UK Restaurant Over Trademark On ‘Taqueria’
