Taqueria hits London’s Sonora Fields with trademark legal threat
Another London restaurant served an exceptional Sonora taqueria with a cease and desist from using the word “taqueria” in its name and identity. Worldwide Taqueria, the trading name of Taqueria, which operates two London restaurants, in Notting Hill and Exmouth Market, alleges Sonora’s use of the term constitutes trademark infringement.
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 a September 12 call, Sonora owners Michelle Salazar de la Rocha and Sam Napier told Eater London they thought they could fight the charge. They believe that the generic nature of the term “taqueria” means that their use does not necessarily mean, as Taqueria claims, that a “consumer will consider services that [Sonora is] offers under signs containing TAQUERIA to be supplied by, in association with, or under the authorization of [Taqueria].”
Taqueria is owned by Trent Alexander Ward and Daniele Benatoff, directors of numerous companies, according to public records. The first site, on Westbourne Grove in Notting Hill, opened in 2005; the Exmouth market suite in Clerkenwell open in 2021. Taqueria, the restaurant, grew out of a street food stand, which also served as a retailer for the Mexican cookware and ingredient retailer Cool Chilli Co. This brand still exists, but is no longer affiliated with the restaurant.
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, the use of TAQUERIA by Sonora Taqueria Ltd without the consent of Worldwide Taqueria Ltd constitutes trademark infringement.”
Munoz also said that “the TAQUERIA brand has been used by Taqueria Worldwide Ltd and its predecessors for a very successful restaurant in London since 2005.
“Through this long-standing use, Worldwide Taqueria Ltd has developed significant brand awareness and reputation […] it will take all necessary measures to maintain the distinctive character of its marks and to enforce its rights against infringement by other parties.
But it’s not so simple for the owners of Sonora, who have themselves set up their own successful food business in London, serving unrivaled flour tortillas, barbacoa, carne con chile and adobada. over the past three years.
“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.
This means that if Sonora can prove Taqueria’s rights to what is, 18 years later, a less obscure descriptor, or “generic term”, then this can actually “file to invalidate someone else’s copyright”. But the first step will be to overcome the initial challenge issued on behalf of Sonora.
Salazar, whose family runs the Pollo Feliz grilled chicken chain in northern Mexico, said: “It’s so stupid. And the response from the Mexicans was like, contempt. Because it’s ridiculous. There is no way to express…and I guess it also brings to mind the fact that everyone thinks there is no good Mexican Mexican food in the UK. ? This is another obstacle.
“It’s also quite telling,” Napier added, “I think, why so much food sucks anyway, not just Mexican food, but in general, why it’s so expensive and so often crappy. If you invest your money and you’re focusing on the legal teams to sue, what does that have to do with the food? You know, how does that lead to a good meal?”
Taqueria has a contentious form: In 2020, it successfully opposed the trademark of Taco Ria, TACO RIA and TACO-RIA, an Essex-based restaurant brand. The Hearing Officer in that case wrote: “it seems to me that it is likely that the average consumer could confuse one mark with the other – confuse the marks directly”.
“As far as it sounds, ideological is the wrong word,” said a visibly exasperated Napier. “But that’s so wrong, you know?”
This legal threat comes as Salazar and Napier close the street food stall they have operated in various forms in Netil Market, Hackney, since February 2020 – ending a hugely successful but hugely difficult period of business, which was born of the first Containment linked to covid19.
With Salazar and Napier now actively seeking a permanent home for Sonora, the duo have also teamed up with JKS Restaurants at Center Point’s Arcade Food Hall, where Mexa – a birria and mariscos concession – will open next week, September 16.
Stay tuned for more on this opening and the outcome of Taqueria’s challenge soon.