When a Name Becomes a Brand: Lessons from the Jo Malone Trade Mark Dispute

The beauty and fragrance industry has been watching closely as Estée Lauder Companies (ELC) brings legal action in the Jo Malone trade mark dispute, involving her newer brand Jo Loves, and collaboration with high street retailer Zara. At the heart of the dispute lies a familiar but complex legal issue, what happens when a founder sells a business built around their own name and later seeks to reuse that name commercially?

This case offers a valuable lens through which to explore trade mark rights, contractual restrictions, and the commercial realities of personal branding. We examine the key legal and strategic considerations.

Background to the dispute

Back in 1999, the sale of Jo Malone’s perfume brand to ELC contractually prevented her from using her name for certain commercial purposes, including the marketing of fragrances. Therefore, it is not entirely surprising that this dispute has arisen.

The original agreement would have presumably involved a substantial payment from Estée Lauder to Jo Malone personally, so it is understandable that ELC would seek to protect that investment. It is possible that the contractual terms governing how Jo Malone could use her name were not fully defined during the contract negotiations which has led to this dispute, for example, when adding the description ‘CBE, founder of Jo Loves,’ to the presence of her name on packaging or marketing materials, it is unclear if this would be considered a breach of the terms.

Why has legal action been taken?

Under civil procedure rules, ELC would have been required to send a pre-action “cease and desist” letter prior to issuing proceedings. During the pre-action correspondence, Zara and Jo Malone may not have agreed to remove the name or pay suitable damages, leaving litigation as the remaining option for ELC to protect its trade mark, contractual rights and value of its acquisition.

Litigation now gives the two parties an opportunity to discuss a clear way forward if the parties now engage in settlement discussions, to prevent a similar dispute in any future business ventures, product lines or collaborations for Jo Malone.

The main outcome for ELC will be to ensure that its market share is protected. Having bought the rights to a valuable and lucrative business and brand, their aim is to ensure its USP, in this case Jo Malone’s name and the associated reputation, is not being utilised by a direct competitor.

They will likely seek to ensure that the “Jo Malone” name is not used in any context in connection with the Zara product range going forward. They may also wish to pursue financial compensation for sales of the range from the past six years, as well as a contribution towards the legal costs incurred.

How might Jo Malone and Zara respond?

The parties may still reach a settlement, which could involve a financial payment and/or an agreement to stop using the name on future products. If no agreement is reached, proceedings will continue to trial.

It is still possible that Jo Malone and Zara may argue that describing the perfume as “Created by Jo Malone, CBE, founder of Jo Loves” does not constitute trade mark “use” and therefore shouldn’t be classed as infringement. Whether Jo Malone also breached the 1999 agreement to not use her name commercially will depend on the precise contractual terms she originally agreed to.

Going to trial could allow Zara and Jo Malone to formally challenge ELC, potentially setting a legal precedent that deters similar disputes in the future if they are successful. It may also provide an opportunity for Jo Malone to strengthen her negotiating position about the use of her name, as well as Zara’s public brand credibility by demonstrating a willingness to defend their products and reputation in court. Although this will of course come with a cost of legal fees and the risk that the Court finds against them.

Was this a deliberate branding decision?

It remains unclear whether Jo Malone or Zara obtained legal advice, otherwise known as “clearance advice,” before deciding to reference her name on the packaging of this range, as well as the “Jo Loves” brand.

However, referring both to her name and to the “Jo Loves” brand would have been a deliberate marketing choice, which may be difficult to justify on any basis other than with a view to creating an association with the well-known “Jo Malone” name and customer base. This serves as a reminder to businesses that all internal teams, including marketing, must be aware of key potential legal constraints, as responsibility for compliance cannot simply be placed on the marketing department.

Risks of naming a business after yourself

In addition to the potential loss of control over the use of your name across different platforms or products if the business, or rights to the brand, is later sold, there is also always a significant reputational risk.

This can work both ways:

• If the brand encounters difficulties,
• Or becomes involved in a scandal, the individual’s reputation may be affected, and vice versa.

Conversely, using an individual’s name as part of their own brand can enhance their personal reach on platforms such as social media, enabling them to maintain and grow their audience and carry that into a future venture.

Key lessons for businesses

For purchasers acquiring a brand that incorporates an individual’s name, it is essential that the original owner’s future use of their name is clearly and comprehensively defined. This should include restrictions not only on the traditional trade mark use, but also on additional references to the name that might fall outside of this. Initially, it should remain a priority for the purchaser to ensure that the business’ name benefits from robust trade mark protection.

Anticipated outcomes

It may be that this is a case where both parties can settle, potentially by way of an agreement which clarifies the scope of any permitted future use of the “Jo Malone” name. ELC will likely insist that any such use is strictly limited, if permitted at all, to preserve its commercial exclusivity in the cosmetics market associated with the “Jo Malone” brand, particularly given that the “Jo Loves” brand remains available for use when used without reference to her own name.

If the proceedings do continue to trial, and particularly if the 1999 agreement contains clear restrictions on any future use of the name in any commercial context, ELC may well have a strong claim arising from any prohibited commercial use by Jo Malone. We will continue to monitor the case as it progresses.

This content is provided for general informational purposes only and does not constitute legal advice. It is not intended to address the circumstances of any individual or entity, nor should it be relied upon as a substitute for specific advice from a qualified solicitor. The information reflects the legal position as at the date specified and may be subject to change. If you require advice on a specific matter, please contact us directly.