A recent dispute in the UK courts highlights a critical tension in intellectual property law: the conflict between a founder’s right to use their own name and the contractual rights of a company that has purchased that name as a brand.
The Estée Lauder Companies has issued legal proceedings against British perfumer Jo Malone, her fragrance brand Jo Loves, and the UK arm of retailer Zara. The claim relates to the use of Malone’s name in connection with fragrances produced as part of a collaboration between Jo Loves and Zara.
While the litigation is ongoing, the dispute provides a vital reminder for brand owners about the legal complexities that arise when personal names become valuable commercial trade marks.
Background
Jo Malone founded the fragrance brand Jo Malone London in 1990. In 1999, she sold the business to Estée Lauder, including the rights associated with the brand and the substantial goodwill connected with the name.
Following the sale, Malone remained involved with the company until 2006. Agreements linked to the sale reportedly included strict restrictive covenants on the commercial use of the “Jo Malone” name in relation to fragrance products. After those restrictions expired, Malone launched a new fragrance brand, Jo Loves, in 2011.
The current dispute arises from a collaboration between Jo Loves and Zara. Marketing materials for certain products include wording such as “Created by Jo Malone CBE, founder of Jo Loves.” Estée Lauder argues this breaches contractual obligations and risks creating confusion with the Jo Malone London brand, alleging breach of contract, trade mark infringement, and passing off.
The legal issues
Disputes of this kind typically hinge on three core areas of UK law:
- The "Own Name" Defence: While trade mark law recognises that individuals may use their own names in business, the Trade Marks Regulations 2018 narrowed this. The defence only applies to natural persons (individuals) and must be in accordance with "honest practices in industrial or commercial matters." It does not necessarily protect a company (like Jo Loves) using that name in its branding; indeed, it would seem unlikely that this defence will be applicable in this context.
- Trade Mark Infringement & Passing Off: A successful claim in passing off requires Estée Lauder to prove that Malone’s name carries goodwill, that there has been a misrepresentation (even if unintentional), and that this causes damage. For a claim of trade mark infringement, Estée Lauder would need to show that the use of ‘Jo Malone’ by Jo Malone/Zara was in the course of trade and would cause a likelihood of confusion.
- Contractual Primacy: The specific wording of the original sale agreement often overrides general trade mark principles. If a founder contractually waives the right to use their name "in a trade mark sense" or in specific marketing contexts, the courts are likely to uphold that commercial bargain. Estée Lauder allege that the original agreement precludes Jo Malone from using “JO MALONE” in certain commercial contexts.
Key considerations for brand owners
Define "biographical use" explicitly in agreements
Where a brand includes a founder’s name, sale agreements must define exactly how that name may or may not be used in the future. Does "biographical use" (e.g., "Founded by...") extend to packaging, or is it limited to a CV or a website’s ‘About’ page? Clear drafting prevents litigation years after the deal closes.
Distinguish between the person and the brand
Founders should be aware that their personal right to their name does not automatically grant their new corporate entity the right to use it.
Ensure trade mark protection reflects real-world use
Acquiring companies should ensure their trade mark registrations cover not just the name, but also specific logos and sub-brands. Comprehensive protection makes it far easier to enforce rights if a founder’s new venture skirts too close to the original identity.
Plan for the long term when selling
For founders, selling a namesake brand has permanent implications. Even after a non-compete period ends, the "shadow" of the sold trade mark remains. Negotiating specific "carve-outs" for future ventures such as the right to use one's full name with a prefix or in a purely descriptive manner is essential for preserving future career flexibility.
A continuing issue for founder-led brands
The Estée Lauder v Jo Malone dispute illustrates that while a person’s name is their own, a trade mark belongs to the business. As founder-led brands dominate fashion and beauty, the case serves as a warning to align branding strategy, contractual terms, and trade mark protection from day one.
The outcome of these proceedings may provide further insight into how UK courts balance the commercial use of personal names against the high value of established trade marks.