Jo Malone v Estée Lauder: what’s in a name?

The background - signing away a name

In 1999, Jo Malone sold her original fragrance house (Jo Malone London) alongside the exclusive commercial rights to her name, to ELC. She then stepped down from the business. Jo Loves, launched by Jo Malone in 2011 after the expiry of a non-compete clause in her agreement with ELC, has newly partnered with Zara UK to roll out an affordable fragrance range; the presentation of this new range lies at the centre of the dispute with ELC.

Jo Malone is not the first founder to become involved with name-based disputes. Prior examples include Kate Spade, who had to start afresh with the brand “Frances Valentine” after the sale of her company (and ultimately, she took the drastic step of changing her own name to Kate Valentine to avoid any association with her previous brand/company) and Bobbi Brown, who also had to start up a new company with a completely new name having sold her previous cosmetics company named after herself.

The dispute

ELC alleges that the phrase “A creation by Jo Malone CBE, founder of Jo Loves”, seen on the packaging of the perfumes in Zara UK stores, amounts to:

• (i) breach of contract;
• (ii) trade mark infringement; and
• (iii) passing off.

These claims are likely to relate to the following:

• (i) breach of contract – when a namesake brand is sold, the buyer often looks to include long-term (sometimes indefinite) restrictions in the overarching sale agreement on use of the name. As against Jo Malone, ELC argues breach of these restrictions in relation to fragrance marketing.
• (ii) trade mark infringement – a name can operate as a trade mark if it indicates the origin of goods or services to the average consumer. As ELC owns Jo Malone London, they will argue that Jo Malone’s use of her name as part of the collaboration with Zara UK amounts to unauthorised trade mark use.
• (iii) passing off – the elements that ELC must prove to establish a claim for passing off are goodwill (Jo Malone London’s reputation as built over more than 30 years), misrepresentation (actual confusion with consumers associating Jo Loves with Jo Malone London) and damage to the brand (such as a loss in Jo Malone London’s value or a drop in sales).

Conclusion

The dispute between Jo Malone and ELC highlights the significance of personal name branding for businesses, the likely restrictions on use of recognised names post-sale, and the resulting pitfalls affecting founders and brand owners. Our IP dispute resolution and intellectual property experts can assist you by providing strategic legal advice to help navigate both present and future challenges.