When your name is no longer yours: Estée Lauder v Jo Malone

Estée Lauder’s legal battle with perfumer Jo Malone CBE (Malone) has sparked increased debate over the tension between intellectual property rights, personality rights, and, in particular, ownership of your own name.

Estée Lauder recently brought High Court proceedings against Malone over her use of ‘Jo Malone’ in connection with a fragrance collaboration between Jo Loves, the perfumer’s later venture, and retail giant Zara.

Origins of the Dispute

In 1999, Malone sold her luxury fragrance brand, Jo Malone London, to Estée Lauder. As part of the agreement, the parties entered into a sale and purchase agreement (‘SPA’), an assignment of name deed, and a restrictive covenant prohibiting Malone from using ‘Jo Malone’ as a business, trade, or company name, or in the marketing, advertising, or promotion of competitive products, without Estée Lauder’s express consent.

In 2011, Malone launched a new luxury fragrance brand called Jo Loves, with an aesthetic and branding distinct from Jo Malone London. Malone later began using phrases such as “created by Jo Malone CBE” and “Jo Malone CBE” on Jo Loves packaging, in-store signage, and social media. The resulting dispute was settled in 2024 under the ‘Jo Loves Agreement’, wherein Jo Loves reportedly agreed to stop using ‘Jo Malone’ in this way.

However, Malone later collaborated with Zara to launch a line of perfumes, hand creams, and candles, and Zara thereafter launched a marketing campaign and products featuring the tagline “a collection created by Jo Malone CBE, founder of Jo Loves”.

Core Legal Claims

Estée Lauder responded by commencing further legal action against Malone, her companies, and Zara’s UK subsidiary, claiming:

1. Breach of contract – alleging that the text used by Zara for the marketing and branding of Jo Loves directly violates the restrictive covenants set out in the SPA, and the terms of the Jo Loves Agreement.
2. Trade mark infringement – alleging that Zara’s use of “created by Jo Malone CBE” and “Jo Malone CBE”  is unauthorised and dilutes the value of the registered trade marks it acquired from Malone as part of the SPA.
3. Passing off – that consumers may be misled into believing that the Jo Loves x Zara collaboration is somehow connected with and/or endorsed by Estée Lauder.

The central question for the High Court now is whether the arguably descriptive uses of “created by Jo Malone CBE” and “Jo Malone CBE” cross the line into use of the name in a trade mark sense – that is, as a badge of origin.

The High Court’s decision will provide greater clarity for creators and founders who sell businesses built around their personal identity. In particular, the decision should help clarify the extent to which creators and founders can use their name in connection with new ventures following the sale of business, whilst balancing trade mark and contractual rights of the purchaser.