A man who once cooked for the President of Mexico has been told his Newcastle hotel can no longer use the phrase “Taco Tuesday” in its promotional material.
In what could be Australia’s most ridiculous trade-mark tussle, Victorian company Salsas – who sell Mexican-style food – are directing businesses across the country to wrap up use of the words “Taco Tuesday”.
The colloquial phrase, which many hotels and restaurants use in advertising, will soon be wiped from menu boards, social media and any form of promotion.
Salsas’ brand protection blitz hit the Hunter this week when The Crown & Anchor Hotel (CAH) were told to stop using the phrase.
The Hunter Street pub’s co-owner of five years, Mark Chegwidden, described the situation as “sad” and said he initially thought it was a publicity stunt.
“It’s un-Australian to do this to a small business.” Mr Chegwidden said.
In a letter to the hotel, Salsas states: “We assume that you are unaware that Salsas is the owner of the registered trade mark TACO TUESDAY in the respect to the provision of Mexican-style food and restaurant services”.
“The Mexican-style food offered by Salsas has become extremely well and favourably known among members of the public in Australia, and as a result is associated with Salsas,” the letter said.
“We request that The Crown & Anchor Hotel immediately cease use of the trade mark.”
Salsas Holdings Pty Ltd registered the phrase with IP Australia in 2011, but CAH co-owner Tom Brown, a chef who once cooked for the Mexican President while working overseas, said the hotel is being “bullied and intimidated” for using a phrase that has “been around for 50 years”.
He said CAH will “play it by ear” before making changes to in-house and online advertising.
But intellectual property specialist, Stuart Gibson, a partner of Mills Oakley Lawyers, told the Newcastle Herald businesses run a huge risk if they don’t follow a trade-mark directive.
“[Salsas] can prevent anyone else in the country, even someone in the north-western corner of Arnhem Land, from using that trademark in trade,” Mr Gibson said.
“[Salsas] can sue them for profits that arise out of misuse of that term, or can just sue them for damages where the court will make an estimate of what the damage is.”
He said Salsas was “lucky” the trade mark got through, but it will now have a “monopoly” over the phrase until 2021, when a fee can then be paid to roll the registration over for another decade.
“Generally descriptive trade marks aren’t allowed to be registered,” he said.
“It’s a bit like ‘steak Wednesdays’ or ‘burger Thursdays’ – something that a lot of other establishments might want to use.”
Some of the “great” trademarks around the world like “Google, Uber, Kodak” are invented names, Mr Gibson said, and have marks of originality that differ from generic use.
“They won’t infringe on a word that everybody else wants to use,” he said.
“Nobody had heard of Google or Uber before, they’re all sort of invented names that are quite clever and memorable as well.
“These sort of generic names [Taco Tuesday] always throw out these issues.”
Mr Gibson believes a similar trademark with a reference to a day of the week could still be able to be registered.
“If ‘Taco Tuesday’ gets through, as along as it’s not already registered then ‘Mexican Monday’ would also get through,” he said.
With use of the phrase ultimately set to come to an end, CAH said they will consider rearranging the wording of their Tuesday taco special – a day where they sell for just $2 each.
