Despite a court order and a lawsuit from the real Tammy Taylor over the unauthorised use of her name, the Viljoens continue to use it.
When a judge recently ordered Peet and Melany Viljoen to immediately stop using the Tammy Taylor trademark, it was just another shot over the bow for the nail franchise after the US owner already took steps to sue them for $100 million for using her trademark after their license expired.
Judge Joseph Raulinga ordered Tammy Taylor Global Franchising, as well as the Viljoens to “immediately cease representing or holding out to the public that they have the legal authority and right to sell Tammy Taylor nail franchises in South Africa, without authorisation under the Trademarks Act” or any nail salon that incorporates or uses the Tammy Taylor name or trademarks.
He ordered them to remove all references to ‘Tammy Taylor’ from their websites, stationery, forms, marketing material, salon products and social media platforms within 30 days from the date of the order, which was on 25 April.
However, on 25 May they still used the Tammy Taylor name, after their lawyer informed the lawyer of the franchisee who sued them to get her money back, Lebohang Hlathuka, that they will appeal the judgment.
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Real Tammy Taylor sues Viljoens for $100 million over name use
The real Tammy Taylor, founder and owner of Tammy Taylor Nails in the US, said in April last year that she is suing Melany and Peet Viljoen for $100 million and filed a lawsuit in the US District Court for the Southern District of California, accusing her former licensees of continuing to use her trademarks after the licence ended.
She also uploaded a video on her Instagram account the week before in which she said the Viljoens are illegally using her name to sell franchises, counterfeiting and selling her products, and using her logos and trademarks on all their social media platforms. She also said that the Viljoens threatened, harassed, and stalked her.
In the video she alleged that “from 2017 to 2022 Tammy Taylor, Inc. granted the Viljoen’s the limited right to sell its nail products in Australia and Africa” but that this “was terminated in 2022” and “from 2018 to 2022, granted the Viljoen’s the limited right to develop Tammy Taylor salons in Africa”, but that this “was terminated in 2021”.
Melany Viljoen responded with three videos on TikTok, claiming that she and Peet “own the legitimate registration and ownership of the Tammy Taylor name in South Africa”.
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Viljoens do not own the Tammy Taylor trademark, court hears
The alleged unauthorised use of the real Tammy Taylor’s name became part of Hlathuka’s case after her legal team asked in their application for an order that the Viljoens be ordered to stop using the trademark because they do not own it.
According to Hlathuka’s court papers, the trademark register confirms that Tammy Taylor Inc., a California corporation in Santa Ana, is the registered owner of the Tammy Taylor South Africa trademark.
Melany Viljoen also tried in February 2023 to register Tammy Taylor Global Franchising as a trademark and according to Hlathuka’s court papers, the application will probably be refused because the Trademark Act provides that a mark must not be registered if it is identical to a registered trademark in the name of a different owner or if it is so similar to the registered one that it will deceive or cause confusion, unless the owner consents to it.
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Who owns the trademark? Experts weigh in
Nishaat Slamdien, associate and John Foster, partner at law firm Spoor & Fisher, wrote in May last year that trademarks are territorial in nature and trademark rights are limited to the country where they have been used and/or registered, although there is an exception for trademarks found to be well-known.
They say the Trademarks Act allows owners of well-known trademarks to prevent their use and registration in South Africa that are identical or are an imitation or translation of the well-known mark and are intended for use or registered regarding goods or services that the mark is well-known for and where the use is likely to cause confusion or deception.
“If the well-known trademark is also registered in South Africa, the owner of that mark can prevent its use if the use would be likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the well-known mark, even when there is no likelihood of confusion or deception.”
Slamdien and Foster say it appears that the trademark was registered in South Africa, as a search of the Trademarks Register shows that Tammy Taylor, Inc is the current owner of an application for registration and registrations for the trademark in South Africa.
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Melany Viljoen’s trademark application assigned to real Tammy Taylor
They point out that it seems that in 2016, Justsmart Mobile (Pty) Ltd, with Melany Viljoen as the sole director, sought to register the Tammy Taylor South Africa logo, but this application was subsequently assigned to Tammy Taylor US.
In addition, they point out that Peet Viljoen said in a video on Instagram that “transfer to the USA was denied”, but that the Trademark Register revealed this was not the case. “As the word mark was originally used under licence from the US company, it is questionable whether Justsmart had a good faith claim to ownership of the logos.
“As such, Justsmart might have been compelled to assign the applications for these logos to the US company.”
Slamdien and Foster say that, from an intellectual property perspective, the owner of a registered trademark can rely on the Trademarks Act to prevent the unauthorised use of a trademark if it is likely to cause deception or confusion.
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What does this mean for the Viljoens?
“What this means for the Viljoens is that Tammy Taylor Inc. may be able to rely on its trademark registrations to prevent the Viljoens’ use of it in South Africa.” Therefore, they say, Tammy Taylor Inc. would be able to:
- Obtain an interdict to stop the use and infringement of the trademark
- Demand the removal of the infringing trademark from all goods and advertising material, and where the infringing mark is inseparable from the material, demand that all this material be delivered to Tammy Taylor US
- Claim damages for actual financial loss suffered or
- In lieu of damages, claim a reasonable royalty that would have been payable by a licensee for use of the trademark.
