A fellow London restaurant has served outstanding taqueria Sonora with a cease and desist over the use of the word “taqueria” in its name and identity. Worldwide Taqueria, the business name of Taqueria, which operates two London restaurants, in Notting Hill and on Exmouth Market, alleges that Sonora’s use of the term constitutes a trademark infringement.
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.
During a call on 12 September, Sonora’s owners, Michelle Salazar de la Rocha and Sam Napier, told Eater London that they believe they could fight the charge. They feel that the generic nature of the term “taqueria” means that their using it does not, as Taqueria alleges, necessarily mean that a “consumer will consider the services that [Sonora is] offering under signs containing TAQUERIA to be provided by, in association with, or under the authorisation of [Taqueria].”
Taqueria is owned by Trent Alexander Ward and Daniele Benatoff, directors in numerous businesses, according to public records. The first site, on Notting Hill’s Westbourne Grove, opened in 2005; the follow-up on Exmouth Market in Clerkenwell opened in 2021. Taqueria, the restaurant, emerged from a street food stall, which doubled as a retailer for the retailer of Mexican ingredients and cookware Cool Chile Co. That brand still exists, but is no longer affiliated with the restaurant.
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.”
Munoz also said that, “The trademark TAQUERIA has been in use by Taqueria Worldwide Ltd, and its predecessors, for a highly successful restaurant in London since 2005.
“Through this long-standing use Worldwide Taqueria Ltd has developed significant goodwill and reputation in the trademark [...] it will take all steps necessary to maintain the distinctiveness of its trademarks and enforce its rights against infringement by other parties.”
But it is not so simple for Sonora’s owners, who themselves have created their own successful London food business, serving unrivalled flour tortillas, barbacoa, carne con chile, and adobada during the course of the last almost-three years.
“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.”
What this means is that if Sonora can prove that Taqueria’s rights over what is, 18 years later, a less obscure descriptor, or a “generic term,” then it can actually “file to invalidate somebody else’s copyright.” But the first stage will be overcoming the initial challenge to the Sonora name.
Salazar, whose family runs the Pollo Feliz grilled chicken chain in northern Mexico said, “It is just so stupid. And the response from Mexicans has been like, outrage. Because it’s ridiculous. There’s no way to express ... and I guess it also brings to mind the fact that everybody thinks that there’s no good Mexican Mexican food in the U.K. But if you can’t even call your taco place a taqueria, where do you even start? It’s another barrier.”
“It’s also it’s pretty telling,” Napier added, “I think, of why so much food sucks anyway, not just Mexican food, but in general, why it’s so expensive and so shit so often. If you’re putting your money and focus on legal teams to sue — what the fuck does that have to do with food? You know, how does that lead to a good meal?”
Taqueria has litigious form: In 2020, it successfully opposed the trademarking of Taco Ria, TACO RIA, and TACO-RIA, a restaurant brand based in Essex. The hearing officer in that case wrote, “it seems to me that there is a likelihood that the average consumer may mistake one mark for the other – directly confuse the marks.”
“As much as anything it’s just like, ideological is the wrong word,” a visibly exasperated Napier said. “But it just feels so like wrong, you know?”
This legal threat comes as Salazar and Napier close the street food stall they’ve operated in various guises in Netil Market, Hackney, since February 2020 — bringing to a close a wildly successful but extremely challenging period of business, which grew out of the first COVID-19 lockdown.
While Salazar and Napier are now actively seeking a permanent home for Sonora, the duo has also teamed up with JKS Restaurants at the Arcade Food Hall in Centre Point, where Mexa — a birria and mariscos concession — will open next week, 16 September.
Stay tuned for more on that opening and the outcome of the challenge from Taqueria soon.