Estée Lauder v Jo Malone: Perfume, Passing Off and Personal Names

Background: Estée Lauder, Jo Malone and the Jo Loves Brand

Estée Lauder has brought a trade mark infringement and passing off claim against Jo Malone, her UK company Jo Loves Limited, and ITX UK Ltd (Zara).

In 1999, Estée Lauder acquired the Jo Malone fragrance brand. In 2011, Malone launched a new venture, Jo Loves. Since then, the two brands have co-existed.

The Zara Collaboration and the Trigger for the Dispute

However, Estée Lauder now alleges that a recent collaboration between Jo Loves and Zara infringes its contractual and trade mark rights. The dispute centres on packaging and online descriptions for several fragrances which include the phrase: “Created by Jo Malone CBE, founder of Jo Loves.”

Estée Lauder’s Position

Estée Lauder claims that the appearance of “Jo Malone” on the products goes beyond what Malone is permitted to do under the agreement she signed when she sold her original brand. In particular, it argues that using the name in the marketing of the collaboration improperly trades on the reputation of the Jo Malone brand it now owns, potentially leading consumers to associate the products with the Estée Lauder-owned label.

The case comes at a time when fragrance has become one of the fastest-growing categories in the beauty industry, with high street brands increasingly launching their own scents or partnering with established creators.

Personal Name Trade Marks – An Ongoing Trend

It also echoes recent discussions around personal name trade marks, most recently in relation to Brooklyn Beckham. Jo Malone is far from the only founder whose name became synonymous with a brand: Bobbi Brown, Karen Millen and Kate Spade are just a few well-known examples.

The dispute is a reminder of a key commercial reality: when founders sell brands built around their own names, they may also be selling the legal right to use that name in business.

If you’d like to discuss the issues covered in this article, reach out to Piers Strickland.