Mariela Gutierrez Olivares is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.
Controversy ensued when a Mexican food restaurant in the UK, Taquería, issued a cease and desist letter to a similar restaurant, Sonora Taquería, for infringement of their registered mark “Taqueria.” Yet taquería is Spanish for a place where tacos are sold. Trademarking taquería is akin to trademarking “pizzeria” or “café.”
Across social media platforms, taco enthusiasts criticized what they perceived as an act of cultural appropriation by Taquería (owned by Taquería Worldwide “TW”). A group called MexiBrit even launched a petition which has collected over 100,000 signatures to date, hailing, “The Mexican UK community is outraged and we won’t stop until we see justice. Stop the cultural appropriation!” However, Sonora Taquería is not the first business TW’s trademark is enforced against. In 2020, TW overcame a hearing for invalidation and revocation of their mark and successfully opposed a competitor’s mark, “Taco Ria” claiming it was “visually similar and phonetically and conceptually identical” and would confuse consumers.
Conflicts surrounding marks that many consider generic, descriptive or worse culturally appropriating (or misappropriating) are common. The recent taquería conundrum in the UK highlights the following issues in the global trademarks (and IP) regime:
- The role of trademark examiners interpreting the statutes that grant trademark rights is increasingly challenging in a global economy. In cases like the one here, trademark examiners and officers consider the average consumer’s knowledge in the jurisdiction they are acting. Here, a trademark examiner would examine the understanding of the UK public when reviewing the “Taqueria” mark. Presumably, when it was granted in 2004, the mark was not considered generic or descriptive.
- The use of generic and descriptive marks will inevitably cause harm. Owners who invest resources to build a reputation suffer when they have to discontinue use of a mark. Inversely, non-owner users who become excluded from using a term where no other exists also suffer. Here, TW could choose to surrender its mark, but not without facing a considerable financial setback – forfeiting the investment made to build its name and re-distinguishing its business under a new name. Sonora Taquería and others who wish to defend their use of the mark must also spend their resources and potentially face more significant losses if those actions fail.
- Protecting traditional and cultural heritage requires adequate legal tools. Whether “Taqueria” ought to remain a generic term available for anyone to use in their business name is a legal question. Though various international authorities have called for the protection of traditional and cultural heritage, legal tools to determine how such protection is to be accomplished are lacking. Despite the moral reprehension associated with cultural appropriation, legally-binding solutions are few and far between, left to each jurisdiction.
Trademarks indicate the source of a product or service. Where intellectual property rights (including trademarks) exist, accusations of cultural appropriation are insufficient to cancel or invalidate those rights. All things considered, more taquerías means more tacos and that is a great problem for the UK and the world to solve.