It is important to file trade marks to protect your brand as soon as possible, as the UK is, with certain exceptions, a first-to-file jurisdiction which means that whoever files for a trade mark first has the rights to the words or logo that is registered. In certain circumstances, this can provide a real opportunity if you are early enough to a market. One such example is a London-based Mexican restaurant that in 2004 registered a trade mark for ‘Taqueria’.
Taqueria means a restaurant specialising in tacos and is to Mexican restaurants what the word pizzeria is to Italian restaurants. Trade marks generally cannot be descriptive and so today an application for Taqueria would be unlikely to be accepted however twenty years ago Mexican food was not that big in the UK and so the Intellectual Property Office presumably did not feel that the application was descriptive at that time.
Worldwide Taqueria (WT), the owner of the trade mark, is now seeking to enforce the mark and has sent a cease and desist letter to another Mexican restaurant for featuring the word Taqueria in their name. WT has made the point that as the owner of the mark they have the exclusive right to use that mark for the goods and services for which it is protected and that the mark is infringed when used by other people.
The flip side to this is that trade marks can be cancelled if they are or have, since their registration, become generic and descriptive of the goods and services for which they are registered. There are many examples of this, including sellotape, and this appears to be a real risk for this trade mark. If the infringement action is pursued an application to cancel the trade mark will presumably follow and it will be interesting to see how this develops.
If this story has raised any questions for you please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or by email at firstname.lastname@example.org: Companies, EU/International, Legal News, News, Trade Marks