Jo Malone has been a household name in fragrance since the 1990s. Following international success, company founder and entrepreneur Ms Malone sold the business to the Estée Lauder Group in 1999, relinquishing the rights to use ‘Jo Malone’ in any competing business internationally.
Following a recent collaboration between Jo Loves (Ms Malone’s subsequent venture) and Zara, the Estée Lauder Group filed claims for breach of contract, trade mark infringement and passing off, alleging the unauthorised use of Ms Malone’s own name in the collaboration’s marketing.
The legal issues
The Estée Lauder Group has argued that the use of ‘Jo Malone’ in the campaign breaches the commercial arrangement reached between the parties, which placed restrictions on Ms Malone’s use of her name in certain commercial contexts, explicitly including the marketing of fragrances. Their position is that the campaign rides on the coat-tails of the goodwill and reputation built within the ‘Jo Malone’ brand, ultimately undermining Jo Malone London’s brand equity.
A key component of the dispute is the prominence of the name in promotional materials. One product description on the Zara website reads: ‘in collaboration with perfumer Ms Jo Malone CBE, founder of Jo Loves’. Estée Lauder have argued that this wording risks causing consumer confusion, potentially leading customers to believe the line is a collaboration with Jo Malone London rather than Jo Loves.
Ms Malone’s legal team will likely argue that the addition of ‘founder of Jo Loves’ sufficiently differentiates the two brands. On the passing off claim, the courts will need to assess the perception of the average consumer and whether the use of the mark is fair and honest.
It is worth noting that ‘Jo Malone’ is registered as a trade mark across a broad range of classes, including Class 3 (cosmetics, perfumery and toiletries), Class 35 (marketing and advertising) and Class 44 (hygienic and beauty care). This trade mark was assigned to the Estée Lauder Group as part of the 1999 sale agreement, granting them full monopoly rights over the mark within its registered classes.
Karen Millen faced a strikingly similar issue in the 2010s and ultimately lost a legal fight to trade under her own name, following the sale of her business in 2004. The court held that when a buyer purchases a namesake brand, it acquires the goodwill attached to that name. Any subsequent use by the founder, even for different products, could dilute that value and confuse consumers. In that case, the designer was prohibited from using even ‘Karen’ or ‘KM’ in a competing business internationally.
Key Commercial and IP Considerations for Businesses
- Trade Mark Assignments: In a business sale, the assignment of intellectual property rights is typically absolute. Even after a non-compete clause expires, as Ms Malone’s did in 2011, the trade mark rights remain with the purchaser. A founder does not regain the right to leverage their name commercially simply because time has passed.
- The Average Consumer Test: The central question in a passing off claim is whether the average consumer would be confused. While Ms Malone’s team may argue that the words “Founder of Jo Loves” provide sufficient differentiation, the courts will examine whether the prominence of the “Jo Malone” name unfairly leverages the goodwill now owned by Estée Lauder.
- The Risk of Personal Branding: Using your own name as a brand identity creates long-term risk. As a business grows, the value of that name becomes a separable asset. Should you ever wish to exit the business, you may find yourself legally barred from using your own name in future ventures.
Key Takeaways
This case is a cautionary tale for any business owner considering using their own name as part of their brand identity. Attaching your personal identity to a business venture carries significant risks, particularly if you ever wish to sell. Ms Malone built considerable value in her name, and now finds herself in a legal battle over the right to use it.
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