The trademark registration of “arepa”, the name used to describe a traditional Venezuelan food, has generated significant debate and concern among Toronto’s Venezuelan community. Eduardo Lee, the owner to Toronto’s Arepa Café, registered “arepa” in April of 2011. After learning of the registration, members of Toronto’s Venezuelan community have expressed their concern over the ownership of what is a common Venezuelan and Columbian cuisine.
An arepa can be described as a grilled cornbread sandwich and is considered to be a Venezuelan tradition. Even before the issue of trademark registration was brought to the attention for the Venezuelan community, Arepa Café’s rights over the use of “arepa” resulted in conflict between Lee and the owner of Arepa Market, also located in Toronto. Lee sent a cease and desist letter to Arepa Market’s owner, Luis Vega. Vega originally filed a statement of claim against Arepa Market before voluntarily abandoning the mark.
Section 12(1)(c) of the Trademarks Act states that a mark is not registrable if it is “the name in any language of any of the wares or services in connection with which it is used or proposed to be used”. Although the mark registered is for both “arepa” and the design of Arepa Café, it seems that CIPO’s lack of knowledge of arepas as a common food originating from a particular culture allowed the uncontested registration of “arepa”.
Members of the Toronto Venezuelan community remain uncomfortable with ownership of a word common to their culture and fear monopolization. Activists have contacted CIPO, seeking to educate about the meaning of “arepa” and its significance in Venezuelan culture. Similarly, an unrelated group has launched the website Free Arepa with the same goal of spreading knowledge. So far, CIPO has not responded to any of these attempts and a petition is currently circulating through Toronto’s Venezuelan community.
The efforts of the Venezuelan activists may be too little too late. Had their campaign targeted the mark before it was on the registrar, their attempt at raising awareness may have prevented the registration of “arepa” as contrary to 12(1)(c). Further, had Luis Vega not abandoned Arepa Market, the court would have had the opportunity to examine whether Arepa Market’s use of “arepa” was confusing to members of the public.
Lee maintains that his desire to protect Arepa Café’s mark stems from his goal of preventing confusion as he moves towards franchising. Lee does not want to prevent others from selling arepas, he only wishes that they do so under a clearly distinguishable name and design. For example, a store called Arepiando has commenced business on Dufferin Street and has not been challenged.
Nora Sleeth is a JD Candidate at Osgoode Hall Law School.