After the real Tammy Taylor got a judgment against them for R71 million ($4 million), the Viljoens are now suing her for R3.4 billion.
Peet and Melany Viljoen are suing Tammy Taylor for $200 million (about R3.4 billion) in the US in their trademark dispute.
This is after Taylor obtained a judgment for $4 million against them earlier this year for statutory damages caused by their use of her trademark and breach of contract.
The Viljoens now say they got started with an “illegal contract” right at the beginning when they signed a master licensing agreement with Taylor.
Since they left the country a few months ago to live in Miami, Melany has been running a podcast where they promised to “spill the tea”, “tell the truth” and “bring the receipts”.
They recently announced on the podcast that they are now suing Taylor for $200 million, with Melany starting the podcast saying that Peet is “one of the best and smartest lawyers in South Africa” when Peet interrupts her with “my IQ was tested”.
Melany then says you must have your IQ tested if you want to become a lawyer. Peet was disbarred as an attorney a few years ago and is still listed as disbarred by the Legal Practice Council.
ALSO READ: US court rules Viljoens must pay real Tammy Taylor R71 million
Trademark lawyer points out mistakes in Viljoens’ ‘case’
Peet then tries to explain their case and how trademark law works.
The Citizen asked a trademark attorney, Nishaat Slamdien, an associate at Spoor and Fisher, to look at some of his statements to see if he has his facts correct. Unfortunately, it seems that the “smart lawyer” should do a bit more research.
Peet claims that the initial master licence contract was a lie because Taylor made them believe that she manufactures the products used in her salons while that is not the case. Peet then claims that you cannot licence something you do not manufacture, but Slamdien says that is not correct.
“The owner of a trademark has the exclusive right to use the mark and may also grant licences to others to use the mark, subject to any limitations imposed by the owner. A trademark licence allows the licensee to apply the mark to goods or services according to the terms of the licence, regardless of whether the licensee manufactures the goods themselves.”
She points out that many well-known brands do not manufacture their own products and instead enter into manufacturing agreements with third parties to produce goods on their behalf and then apply a trademark to those goods.
ALSO READ: Viljoens say Tammy Taylor will not get her R71 million [VIDEO]
What does a trademark indicate?
“The trademark indicates the origin of the goods, that they have been manufactured or supplied under the control of the trademark owner or an authorised licensee, which is responsible for their quality. It does not necessarily imply that the trademark owner manufactured the goods themselves.
“Nobody is allowed to label products with the Tammy Taylor trademark unless they have a valid licence from the trademark owner, but anyone can resell genuine Tammy Taylor products already produced and marked by Tammy Taylor US.”
Slamdien says this means, for example, that if you buy a pair of Nike sneakers, you can resell that pair with the trademarks applied to it still intact but that does not imply that you are the trademark proprietor; it just implies that Nike had control, directly or indirectly, over the manufacture of the sneakers.
However, you cannot take another pair of sneakers and apply the Nike trademark to them yourself, because those sneakers do not originate from Nike. The trademark’s function is to indicate origin and distinguish goods from one business source from goods having a different source, she says.
ALSO READ: Mel Viljoen has a new partner in the US and 10 Afrikaner ‘girls’ on the way
Viljoens could only use Tammy Taylor trademark with permission from owner
“Even if the Viljoens obtained the same products from the same manufacturer as Tammy Taylor US, they cannot apply the Tammy Taylor trademark to them without permission from the trademark owner. Doing so would make the goods counterfeit under the Counterfeit Goods Act that treats counterfeiting as a criminal offence.”
Viljoen also says: “A trademark is a name with a recognisable mark next to it.” He uses the example of Mercedes to explain this, saying that anyone can use the name “Mercedes” but not the logo, but Slamdien says this is not quite the case.
“A trademark can be much more than that. The South African Trade Marks Act provides that a trademark is any sign that can distinguish one trader’s goods and/or services from another’s. This can include words like Mercedes, without the logo, logos combined with a word, such as the Mercedes logo and the word ‘Mercedes’, slogans, shapes or colours.”
ALSO READ: Real Tammy Taylor owns her trademark, not the Viljoens – expert
No, Peet, Mercedes does own the word as a trademark
Viljoen also says Mercedes does not own the word Mercedes . “You can start Mercedes Lawnmower Shop and Services and they cannot stop you. What you cannot do is use their logo next to their name.”
Slamdien says this is also not correct. “A trademark registration grants the owner exclusive rights to use the mark and authorise others to use it in relation to the goods and services for which it is registered.
“It is not only the logo that is registered in South Africa. Mercedes has trade mark registrations for the word Mercedes as well. In other words, the statement ‘you cannot use their logo next to their name’ is incorrect.”
She points out that Mercedes could, under the Trade Marks Act, obtain an interdict to stop the use of an infringing trademark, or a court order for the removal of the infringing trademark from all goods and advertising material, or, where the mark cannot be removed, require that all material be delivered to the owner.
ALSO READ: Hawks investigating Peet and Melany Viljoen for fraud with Tammy Taylor franchises
Claim for damages if trademark infringement leads to loss
Mercedes could also claim damages from the infringer for actual financial loss suffered or claim a reasonable royalty, rather than damages, that you would pay to use the trademark. “Mercedes may also be considered a well-known trade mark that enjoys broader protection even beyond the goods or services for which the mark is registered.”
The Trade Marks Act provides protection for well-known trade marks by prohibiting use of the mark in a way that would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the mark, even for goods or services that are not similar.
Slamdien says this means that even if you wanted to start a “Mercedes lawnmower” business, which is unrelated to cars, Mercedes could still stop this use because it could damage the reputation of its well-known mark.
About Viljoen’s claim that “Tammy only registered the same trademark in the US in 2018/2019… This is what Tammy tried to steal from Melany. Logic dictates that if you transfer something, it belonged to this person.” Slamdien says a search of the Trade Marks Register reveals that various trademarks incorporating the words “Tammy Taylor” are registered in the name of Tammy Taylor Inc and not the Viljoens.
ALSO READ: Tammy Taylor Global Franchising gets a big hiding in South African high court
However, the Viljoens are adamant that the real Tammy Taylor stole their trademark, although a South African judge ordered them earlier this year to stop using the trademark.
