Mexican franchise Salsas Fresh Mex has sparked controversy by sending a cease and desist letter to iconic Melbourne pub, the Reverence Hotel, over their use of the phrase ‘Taco Tuesday’.
The Reverence, located in Footscray, is famous for its live music and cheap weekday eats, however came under fire for advertising ‘Taco Tuesday’, a phrase that has been trademarked by Salsas since 2011.
Salsas, who were acquired by Retail Zoo Group Pty Ltd and Boost Juice magnate Janine Allis and her husband, Jeff Allis in 2008, extensively use the ‘Taco Tuesday’ phrase across their multi-platform advertising campaigns.
In the letter addressed to Reverence Hotel publican Matt Bodiam, which has since been posted to Twitter, Salsas Holdings marketing manager, Rebecca Woods expressed that the phrase was pivotal to the company’s branding.
“We assume that you unaware that Salsas is the owner of the registered trademark TACO TUESDAY in respect to the provision of Mexican style food and restaurant services,” the letter states.
“The Mexican-style food offered by Salsas under that trademark has become extremely well and favourably known among members of the public in Australia, and as a result is associated with Salsas”.
In an interview with The Age, a spokeswoman for Salsa Fresh Mex, who declined to be named said that as a franchisor, the company is committed to providing ongoing support for its network, including the defence of trademarks.
“Legally we must defend this against companies big and small,” she said. “We believe it is our responsibility to inform all businesses of our trademark ownership to best protect the interests of our small business owners”
Ian Neil, Director of Litigation at McCarthy Durie Lawyers, says while trademarking a piece of intellectual property like a phrase can be difficult, it’s not impossible.
“It can be done, if the business can prove they have some attachment to the phrase they can register it,” Neil said.
“There’s a myriad of cases similar to this, it happens all the time, the fact that Salsas has been smart enough and diligent enough to register the phrase puts them in really good stead moving forward.”
The Reverence Hotel has since renamed their Tuesday mexican night ‘Taco Suesday’.
While this is not the first time that a trademark phrase has caused controversy in the franchise world, American franchise Taco John’s has claimed ownership of Taco tuesday since 1989, it does send a stern warning for Australian small businesses and franchisors to take note of.