Much of the IP work lawyers deal with involves large corporations that have at least some employees with reasonable IP expertise and some of whom even have dedicated IP departments. It's easy to overlook the fact that small businesses own IP too, and that they frequently encounter difficulties with their IP matters due to insufficient knowledge and limited resources.

Two recent UK news stories illustrate the kind of problems small enterprises can have with IP.

Taqueria... a place where you get tacos

The owners of a small London restaurant, Taqueria Sonora, were recently served with a cease-and-desist letter... one that runs 20 pages long. The cease-and-desist letter came from lawyers representing a a UK trade mark registration for the name.

The letter was sent by lawyers acting for a company called Taqueria, a company that operates Mexican restaurants in London. A company that owns a UK trade mark registration for the name Taqueria.

The owners of the trade mark registration claim use of the mark Taqueria going back to 2005. They claim that they have "developed significant goodwill and reputation in the trademark... (and that they) will take all steps necessary to maintain the distinctiveness of its trade mark and enforce its rights against infringement by other parties."

The trade mark owners go on to say that "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." They claimed that the "use of Taqueria without Taqueria Ltd's consent constitutes trademark infringement." They also made the claim that there is passing off.

The owners of Taqueria Sonora, Michelle Salazar de la Roche and Sam Napier believe they have a defence. They say that the word "taqueria" is generic and not distinctive "because there can be many taquerias, just as there can be many pizzerias". The Merriam-Webster dictionary, for example, defines the word as a Mexican restaurant specialising especially in tacos and burritos.

They go on to argue that people seeing Taqueria Sonora will not believe that it is linked to Taqueria. They make the point that when the trade mark was filed back in 2004 there were likely a few taquerias in the UK, but now there are much more.

The owners of Taqueria Sonora go on to say that comments that they have received from people they know in Mexico – of course the home of the taco and the taqueria - 'has been like, outrage.. because it's ridiculous... if you can't even call your taco place a taqueria where do you even start?'

There's an interesting dispute building up here and both sides seem to have a reasonable understanding of trade mark law. It will be interesting to see how this progresses. And whether the media remain interested.

A load of rubbish

It seems to be increasingly accepted that if you're a small business and you're threatened with IP infringement proceedings you should immediately run off and get help from the people who can best help you .... no, not lawyers...journalists. Because, as we all know, the press simply can't get enough of IP disputes!

Recently, two men from Brighton, UK who run a refuse business, decided to name their business The Lord of the Bins and came up with the strapline "One ring to remove it all". It's likely that they thought their choices were clever. But lawyers who act for the company Middle-Earth Enterprises were not amused. That's because this company has the rights to the name of The Hobbit and the Lord of the Rings trilogy. The lawyers sent a letter. Not one of those "good luck with your new rubbish endeavour" letters, but a cease-and-desist letter. A letter with threats of ominous things like "an infringement of our client's trade mark rights."

The bin-men say they can't afford a fight. They accuse the letter-writers of using "bullyboy tactics". They claim that they're "just trying to make people smile and make a living" (they clearly are helping the trade mark owner's lawyers smile and make a living).

There's not much more to this story, but the newspaper does manage to fill some space by mentioning some previous IP cases that made the news. We'll do the same thing. There was the one that involved a man called Singh who operated a convenience store called Singhsbury's. When threatened by Sainsbury's, Mr Singh changed the name of his store to Morrisinghs (Morrisons being another big supermarket chain in the UK). And then there was that village pub, Starr Inn Vogue, that was asked by the fashion magazine Vogue to drop the word Vogue from its name.


The message we want to get across is simple, whether your business is big or small you do need to take IP seriously.

Reviewed by Ilse du Plessis, an Executive in the ENSafrica IP department

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.