29th June 2018 - Sam Gilbert

A popular pub in Melbourne’s Footscray has received a cease and desist letter from the popular Mexican chain franchise “Salsas Fresh Mex”. The letter alleges that the pub “The Reverence Hotel” is infringing the intellectual property rights of Salsas as the owners of the trade mark “Taco Tuesday”, and demands that The Reverence immediately stop using the sign. Publican Matt Bodiam says “I can’t believe someone can trademark “Taco Tuesday’; it would be like trademarketing ‘Happy Hour’. Matt says the pub had been serving up cheap tacos and beer every Tuesday night since he took over the bar in 2012.

History of the Trade Mark “Taco Tuesday”

 The history of the phrase “Taco Tuesday” appears to originate in the US back in the 1980’s by a now-popular Mexican franchise restaurant, Taco John’s.

Taco John’s originally registered the phrase in 1989 and has since gone to considerable measures to enforce those rights associated with the trade mark against other restaurants and even against a pharmaceutical company. For example, in 2010 and 2014, Taco John’s enforced its rights against two other Mexican restaurants operating in the US for using the “Taco Tuesday” term without permission.

Registration of “Taco Tuesday” in Australia

The trade mark “Taco Tuesday” was registered by Salsas back in 2011, and evidently with no oppositions recorded for the mark by IP Australia.

Is “Taco Tuesday” capable of distinguishing Salsas’ goods and services?

According to section 41 of the Trade Marks Act 1995 (Cth) (the ‘Trade Marks Act’):

“An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons”.

The question then arises: Is “Taco Tuesday” ordinarily used to indicate the ‘kind, quality, value, or some other characteristic, of goods or services; or the ‘time of production of goods or the rendering of services’?

In this regard, it is important to consider whether the term “Taco Tuesday” has become generic or commonly used to indicate the offering of Taco’s on a Tuesday. If “Taco Tuesday” has become generic or commonly used in the industry, then arguably the term is not capable of registration as a trade mark.

For instance, it may be true that “Taco Tuesday” was once distinctive, but through wide spread use, it has lost its distinctiveness. In that vein, it is important to consider whether other traders, acting in good faith, would want to use the term “Taco Tuesday” to advertise and promote their services? If the answer to that question is yes, then the validity of a sign operating as a trade mark could be disputed because it is not capable of distinguishing the relevant goods or services.

Defences to trade mark infringement

Under section 122 of the Trade Marks Act, a trade mark is not infringed if a person uses a sign in good faith to indicate the ‘kind, quality, value, or some other characteristic, of goods or services, or the ‘time of production of goods or the rendering of services’.

The key determination therefore is whether The Reverence is using the phrase “Taco Tuesday” as though it was its own trademark (i.e. as a ‘badge of origin’), or rather if it is being used to describe a service, such as offering tacos on a Tuesday.

Conclusion

Even though the Reverence may have a possible defence to the claim of infringement, it appears that they have instead opted to change the name of “Taco Tuesday” to “Taco Sues’day”. In the meantime, let’s just hope that Salsas don’t argue that “Taco Sues’day” is deceptively similar.

Take away comments

This article is a stark reminder of the need reconsider one of the key purposes of granting trade mark protection. That is, to provide consumer confidence in knowing and being able to identify the origin of goods and services. Perhaps in this instance, “Taco Tuesday” ought to be left in the public domain.

Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney

 If you would like to know more about this article or trade mark infringement, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.