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, °Õ²¹±ç³Ü±ð°ùò¹, issued a  to a similar restaurant, Sonora °Õ²¹±ç³Ü±ð°ùò¹, for infringement of their registered mark "Taqueria." Yet is Spanish for a place where tacos are sold. Trademarking is akin to trademarking "pizzeria" or "café."
Across social media platforms, what they perceived as an act of Ìý²ú²â (owned by °Õ²¹±ç³Ü±ð°ùò¹ Worldwide "TW"). A group called MexiBrit even launched 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 °Õ²¹±ç³Ü±ð°ùò¹ is not the first business TW's trademark is enforced against. In 2020, TW 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 . The recent ³Ù²¹±ç³Ü±ð°ùò¹ 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 °Õ²¹±ç³Ü±ð°ùò¹ 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 have called for the , legal tools to determine how such protection is to be accomplished are lacking. Despite the moral reprehension associated with , 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 ³Ù²¹±ç³Ü±ð°ùò¹s means more tacos and that is a great problem for the UK and the world to solve.