The acrylic claws are out again with the revival of the dispute between Tammy Taylor (the American founder of the nail brand Tammy Taylor Nails) and Melany and Peet Viljoen, about who actually owns the TAMMY TAYLOR trade mark in South Africa.
Background:
Tammy Taylor, the CEO of the American nail brand Tammy Taylor Nails, posted a video to her social media accounts stating that she filed a lawsuit against Melany and Peet Viljoen for $100 million (around R1.9 billion) due to, amongst other things, the alleged unlawful use of the TAMMY TAYLOR trade mark by the Viljoen’s.
In the video, she alleged that “from 2017 to 2022 [Tammy Taylor, Inc] granted the Viljoen’s the limited right to sell Tammy Taylor nail products in Australia and Africa” but that this “was terminated in 2022” and “from 2018 to 2022, [Tammy Taylor, Inc] granted the Viljoen’s the limited right to develop Tammy Taylor salons in Africa”, but that this “was terminated in 2021”.
In a three-part video series posted to her TikTok account, Melany Viljoen clipped Tammy’s talons short by claiming that she and Peet “own the legitimate registration and ownership of the Tammy Taylor name in South Africa”.
Peet polished off Melany’s video series by echoing her claim of owning the TAMMY TAYLOR trade mark in South Africa in a video posted to his Instagram account.
Does South African IP law protect international trade marks like the TAMMY TAYLOR trade mark?
Trade marks are territorial in nature and trade mark rights are limited to the country where they have been used and/or registered. The exception, however, is if a trade mark is found to be well-known.
International trade marks that are not used or registered in South Africa will only be protected if they qualify as a “well-known” trade mark under the Trade Marks Act.
The Trade Marks Act allows owners of well-known trade marks to prevent the use and registration of trade marks in South Africa that are identical or are an imitation or translation of the well-known mark and are sought to be used or registered in relation to goods or services for which the mark is well-known and where the use is likely to cause confusion or deception.
If the well-known trade mark is also registered in South Africa, then the owner of that mark can prevent the use of that mark, or an identical or similar mark, 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.
Is the TAMMY TAYLOR trade mark registered in South Africa?
It appears so. A search of the Trade Marks Register revealed the following trade mark application and registrations incorporating the words “TAMMY TAYLOR” in the name of Tammy Taylor, Inc:
As shown from the above, Tammy Taylor, Inc (“Tammy Taylor US”) is the current owner of an application for registration and registrations for the TAMMY TAYLOR trade mark in South Africa.
It seems that in 2016, Justsmart Mobile (Pty) Ltd (“Justsmart”), for which Melany Viljoen is the sole director, sought to register the TAMMY TAYLOR SOUTH AFRICA logo (depicted below), but this application was subsequently assigned to Tammy Taylor US.
Justsmart also applied to register the TAMMY TAYLOR NAILS SOUTH AFRICA logo (depicted below) in 2016, but this trade mark application was also later assigned to Tammy Taylor US.
What is Trade Mark Assignment?
The ownership of a registered trade mark or a pending application therefor can be transferred from one person to another. The formal act of transfer of ownership is known as an “assignment”.
Peet, in a video posted to his Instagram account, made reference to the “documents” depicted below and claimed that the “transfer to the USA was denied.”
The Trade Mark Register revealed that the TAMMY TAYLOR SOUTH AFRICA logo registration and application were successfully assigned to Tammy Taylor US and were not “denied”.
However, the application for registration of the TAMMY TAYLOR NAILS SOUTH AFRICA logo (depicted below) was provisionally refused by the Registrar of Trade Marks.
The applicant (Tammy Taylor US) has an opportunity to make representations to the Registrar and provide reasons as to why the trade mark application should be accepted and if the Registrar is satisfied, it may thereafter proceed to registration.
Trade Mark Licensing
A trade mark owner may grant another person a licence to use its trade mark. A licensee does not have an ownership claim to the licensor’s trade marks and will only be permitted to use the licensor’s trade marks on the terms and conditions prescribed by the licensor.
The Trade Marks Act provides that a trade mark application cannot be filed by someone that does not have a good faith claim to ownership of the trade mark.
The proprietor of a trade mark is the person who has appropriated the mark for use in relation to goods or services as a trade mark in that territory. The word “appropriate” is used in the sense of “originate”, “acquire” and “adopt”. The proprietor of a mark is therefore considered to be the person who originated, acquired or adopted the mark for use with the goods or services in the territory in question.
Justsmart, applied to register the TAMMY TAYLOR SOUTH AFRICA logos in its own name. As the TAMMY TAYLOR word mark was originally used under licence from Tammy Taylor US, 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 Tammy Taylor US.
Who Will Break a Nail?
From an IP perspective, the owner of a registered trade mark can rely on the Trade Marks Act to prevent the unauthorised use of a trade mark if it is likely to cause deception or confusion.
What this means for the Viljoens, is that Tammy Taylor may be able to rely on its TAMMY TAYLOR trade mark registrations to prevent the Viljoen’s use of the TAMMY TAYLOR trade mark in South Africa and would be able to:
- Obtain an interdict to stop the use of the infringing trade mark;
- Order the removal of the infringing trade mark from all goods and advertising material and, where the infringing mark is inseparable from the material, ordering that all such material is delivered up 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 trade mark.
Why can’t Justsmart simply switch to another trade mark?
Building equity in a brand takes time and effort. If you do it right, the reputation of your trade mark will attract trade. Switching to another trade mark may create confusion among consumers, resulting in decreased sales, customer dissatisfaction, and reputational damage.
Furthermore, rebranding is not cheap. It involves the development and distribution of new marketing materials, packaging, signage, and promotional campaigns. These costs can be substantial, particularly for small businesses with limited resources.
One thing’s for sure: nailcare is a big and crowded market and the value of a trade mark, to identify and distinguish the offerings of a business, cannot be overstated. Given the consequences of rebranding, respecting the trade mark rights of others is not just a legal obligation, it is also a strategic imperative.
By Nishaat Slamdien, Associate, Spoor & Fisher and John Foster, Partner, Spoor & Fisher
